UNIVERSITY 

OF  CALIFORNIA 

LOS  ANGELES 


SCHOOL  OF  LAW 
LIBRARY 


A  MANUAL 


OF 


TRADE-MARK  CASES. 


COMPRISING 


SEBASTIAN'S  DIGEST  OF  TRADE-MARK 

CASES, 


COVERING  ALL   THE   CASES   REPORTED   PRIOR  TO   THE 

YEAR  1879 ;  TOGETHER  WITH  THOSE  OF  A  LEADING 

CHARACTER  DECIDED  SINCE  THAT  TIME. 


WITH  NOTES  AND  REFERENCES. 


BY 

ROWLAND   COX. 


BOSTON: 
HOUGHTON,  MIFFLIN  AND  COMPANY, 

ftitoergitie  $re£g,  CambriUge. 

1881. 


Copyright,  1881, 
BY  ROWLAND  COX. 

All  rights  reserved. 


The  Riverside  Press,  Cambridge  : 
Printed  by  H.  0.  Houghton  and  Company. 


PREFACE. 


WHATEVER  of  virtue  there  may  be  in  this  compilation  is 
to  be  credited  to  the  intelligence  and  industry  of  the  English 
author.  The  American  editor  has  attempted  only  to  supple- 
ment the  original  text,  and  to  adapt  it  to  the  wants  of  the 
American  reader.  It  is  hoped  that  the  work  will  be  found 
to  be  a  convenient  manual,  and  useful,  in  a  broader  sense,  as 
tending  to  assist  the  growth,  in  a  right  direction,  of  a  branch 
of  jurisprudence  of  constantly  increasing  interest  and  impor- 
tance. 

R.  C. 

229  BROADWAY,  NEW  YORK,  June  20,  1881. 

iii 


PREFACE  TO  SEBASTIAN'S  DIGEST. 


THIS  work  completes  the  design  with  which  the  author  un- 
dertook his  treatise  on  "  The  Law  of  Trade-Marks,"  &c. 

The  object  aimed  at  in  the  present  compilation  has  been  to 
present  a  concise  statement  of  the  facts  and  decisions  in  all 
cases  connected  with  the  law  of  Trade-Marks  and  kindred 
topics,  as  ascertained  by  a  careful  comparison  of  all  the  various 
reports  in  which  each  case  appears.  It  has  been  decided  to 
arrange  this  collection  of  cases  in  chronological  order,  supple- 
menting the  body  of  the  work  with  a  full  index,  in  preference 
to  digesting  the  matter  under  heads,  because,  where  the  latter 
form  of  arrangement  is  adopted,  one  of  two  things  must  hap- 
pen —  either  the  bare  decision  on  each  point  is  given  without 
the  facts  necessary  to  enable  it  to  be  rightly  appreciated,  or 
else  the  facts  have  to  be  repeated  on  each  mention  of  the  case  ; 
besides  which,  the  connection  between  the  points  decided  in 
the  case  is  obscured,  and  points  on  which  the  case  is  only  in- 
cidentally useful  escape  notice  altogether.  It  is  hoped  that 
the  Index  may  supply  a  sufficient  guide  to  the  contents  of  the 
book. 

The  present  volume  contains  cases  decided  in  the  courts  of 
all  the  English-speaking  countries.  But  it  has  not  been 
thought  advisable  to  extend  the  scope  of  the  book  so  as  to 
include  decisions  of  the  courts  of  other  countries,  since,  apart 
from  the  difference  in  language,  the  principles  by  which  the 
Courts  of  France,  Germany,  &c.  are  governed  are  entirely 
independent  of  those  recognized  in  the  Courts  of  the  United 
Kingdom  and  the  United  States. 

A  number  of  cases  hitherto  unreported,  decided  principally 


PREFACE  TO  SEBASTIAN'S  DIGEST. 

under  the  recent  Registration  Acts,  are  contained  in  this 
volume,  taken  sometimes  from  the  Times  or  the  author's  own 
notes,  but  generally  from  the  shorthand  notes,  for  the  use  of 
which  the  author  desires  to  express  his  thanks  to  the  author- 
ities at  the  Trade-Marks  Registry  Office.  In  a  few  instances 
the  existing  reports  have  been  supplemented  from  the  same 
sources.  All  the  places  in  which  each  case  is  reported,  so  far 
as  could  be  ascertained,  are  given.  The  English  cases  are 
brought  down  to  the  Easter  Vacation,  1879 ;  the  cases  from 
other  courts  as  nearly  to  that  date  as  was  practicable.  It 
should  be  mentioned  that  a  few  of  the  more  recent  decisions 
are  under  appeal. 

In  some  instances  statements  of  the  law  on  various  points 
by  learned  judges,  intended  to  be  of  general  application,  are 
appended  to  the  cases  in  which  they  were  made,  and  it  is  hoped 
that  these  extracts  may  be  found  useful. 

L.  B.  S. 

2  NEW  SQUARE,  LINCOLN'S  INN,  May,  1879. 

vi 


TABLE  OF  CASES. 


The  numbers  refer  to  the  numbers  of  the  cases. 


A. 

Abbott  v.  Bakers'  and  Con- 
fectioners' Tea  Association 
(Limited)  379 

Adams,  Williams  v.  662 

Ainsworth  v.  Bentley  259 

v.  Walmsley  257 

Albert  (Prince)  v.  Strange  98 

Aleploglu,  Gout  v.  51 

Alexander,  Jurgensen  v.  211 

Allegbany    Fertilizer    Co.     v. 

Woodside  364 

Allen,  Kinney  t>.  557 

Osgood  v.  410 

Wamsutta  Mills  v.  660 

Allsopp  v.  Walker  545 

Alvord,  Newman  v.  282 

American     Grocer    Publishing 
Association  v.  Grocer   Pub- 
lishing Co.  503 
American    Leather   Cloth   Co. 
(Limited),  Leather  Cloth  Co. 
(Limited)  v.                                223 
American  Lubricating  Oil  Co. 

In  re  486 

American  Sardine  Co.  In  re         422 
Amoskeag  Manufacturing   Co. 

v.  Garner  (1)     314 
(2)     500 
Amoskeag  Manufacturing    Co. 

v.  Spear  100 

Anchor  Tube  Co.,  Selby  v.         566 
Anderson,  Hostetter  v.  652 

Andrews,  Sherwood  v.  263 

Anglo-Swiss  Condensed  Milk 
Co.  v.  Swiss  Condensed  Milk 
Co.  370 

Ansell  v.  Gaubert  163 

Apollinaris  Co.  (Limited)  v. 
Edwards  509 


Apollinaris  Co.  (Limited),  Fish- 
er &  Co.  v.  457 
Apollinaris    Co.    (Limited)    v. 

Moore  6  75 
Apollinaris    Co.    (Limited)    v. 

Norrish  465 
Archbold  v.  Sweet  49 
Ardley,  R.  v.  349 
Armistead,  Blackwell  v.  392 
v.  Blackwell  399 
Army  and   Navy   Cooperative 
Society  (Limited)  v.  Junior 
Army  and  Navy  Stores  (Lim- 
ited) 640 
Atkins,  Schweitzer  v.  298 
Atkinson,  In  re  596 
Aubin  v.  Holt  135 
Austen  v.  Boys  156 
Austria  (Emperor  of)  v.  Day 

and  Kossuth  197 

Ayer  ».  Rushton  574 

B. 

Bachof,  Frese  v.  (1)      .  484 
v.  (2)  603 
Badger,  Emerson  v.  309 
Bailey,  Gardner  v.  365 
Bain  v.  Munro  588 
Baird,  Colladay  v.  186 
Baker,  Mvers  v.  167 
Shackle  ».  13 
Bakers'  and  Confectioners'  Tea 
Association    (Limited),   Ab- 
bott v.  379 
Balmer,  Lamplough  v.  288 
Bank  of  London,  Lawson  v.  140 
Banks  v.  Gibson  248 
Barbara,  Power  v.  56 
Barlow,  Broadhurst  ».  411 
Barnard  v.  Pillow  293 


Vll 


TABLE  OF  CASES. 


Barnett  v.  Leuchars 
Wolfe  v. 

Barrows,  Ex  parte 
In  re 
Hall  v. 
v.  Knight 


253 
390 
553 
540 
215 
184 


r.    Pelsall    Coal    and 

Iron  Co.  530 

Basch,  Kinney  v.  542 

Bass  v.  Dawber  310 

Bassett,  M'Andrew  v.  234 

Batty  v.  Hill  218 

Baxter  ».  Conolly  32 
Societ^  Anonyme  des 
Mines  et  Fonderies 
de  Zinc  de  la  Vieille 

Montagne  v.  559 

Beachim,  Braham  v.  (1)  599 

(2)  633 

Beard  v.  Turner  251 
Bedford,  Bury  v.  222 
Beeton,  Bradbury  v.  320 
Ward  v.  450 
Belcher,  M'Intyre  t;  220 
Bell  v.  Locke  65 
Bell  &  Co.,  Bell,  Black  &  Co.  v.  514 
Bemis,  Taylor  v.  231 
Benbow,  Edmonds  v.  33 
Bennett,  Hudson  ».  261 
Bentall,  Ransome  v.  53 
Bentley,  Ainsworth  v.  259 
Berger,  Samuel  v.  143 
Berndes,  Hinrichs  v.  594 
Bevill,  Thornbury  v.  71 
Billings,  Marsh  v.  Ill 
Binning,  Day  v.  47 
Binninger  v.  Wattles  240 
Blackman,  Filkins  v.  502 
Blackwell  v.  Armistead  392 
^rmistead  v.  399 
v.  Crabb  274 
v.  Dibrell  590 
v.  Wright  466 
Blakeslee  &  Co.  In  re  376 
Blanchard  v.  Hill  2 
Blanford,  Willett  ».  70 
Block  &  Co.  In  re  584 
Blofeld  v.  Payne  50 
Bloomer,  BIoss  v.  146 
Bloss  v.  Bloomer  146 
Boardman  v.  Meriden  Britan- 
nia Co.  302 
Boehm  &  Co.  In  re  470 
Bohmer,  Duwel  v.  613 
Bolles,  Fenn  o.  166 
Bolton,  Kinahan  v.  228 


Bolton,  Singleton  v.  4 
Bond  v.  Milbourn  383 
Boon  v.  Moss  576 
Booth  v.  Jarrett  524 
Bostwick,  Lockwood  v.  319 
Bothin,  Taylor  v.  664 
Boulnois  v.  Peake  294 
Bowker,  Carver  v.  581 
Bowman  v.  Floyd  201 
Boyington,   Tucker  Manufact- 
uring Co.  v.  474 
Boys,  Austen  v.  156 
Bozon  v.  Farlow  22 
Bradbury  o.  Beeton  320 
t;.  Dickens  173 
Bradley,  Coe  v.  489 
v.  Norton  250 
Braham  v.  Beachim  (1)  599 
(2)  633 
v.  Bustard  226 
Brain,  Purser  v.  92 
Brakell,  Schiele  v.  219 
Bramble,  Wilkins  &  Co.,  Mar- 

covitch  v.  595 

Brandreth,  In  re  626 

Braun,  Witthaus  v.  492 

Brebner,  In  re  649 

Breidenbach,  'Rowland  v.  686 
Brewster,  Constable  &  Co.  v.         39 

Brill,  Singer  Man.  Co.  v.  672 

Broadhurst  v.  Barlow  411 

Brook,  In  re  622 

v.  Evans  190 
Brooklyn  White  Lead   Co.   v. 

Masury  154 

Broughton  v.  Broughton  451 

Brown,  Collins  Co.  v.  151 

v.  Mercer  435 

Browne  v.  Freeman  (1)  230 

(2)  424 

Brownrigg,  Day  v.  631 

Brunton,  Coffeen  v.  (1)  99 

(2)  109 

Bryan,  Curtis  v.  291 

Rt>.  147 

Bryson  v.  Whitehead  36 

Bulloch,  Lade  &  Co.  v.  Gray       452 

Bullock  v.  Chapman  95 

Reynolds  v.  615 

Bulmer,  Rolt  v.  614 

Bunn  v.  Guy  11 

Burfield  v.  Rouch  208 

Burgess  v.  Burgess  117 

v.  Hately  169 

v.  Hills  170 

Burke  v.  Cassin  415 


Vlll 


TABLE  OF  CASES. 


Burke,  Wolfe  r.  434 

Burnett  v.  Phalon  277 

Burrows  v.  Foster  207 

Bury  v.  Bedford  222 

Burys  &  Co.  In  re  643 

Bush  &  Co.  In  re  506 

Bustard,  Braham  y.  226 

Byass  ».  Sullivan  188 

Byles,  Kelly  v.  661 

Byron  (Lord)  ».  Johnston  23 


C. 


Campbell,  Charleson  c.  520 

i'.  Hollins  548 
Candee,  Swan  &  Co.  v.  Deere 

&  Co.  339 

Canham  v.  Jones  19 
Carbon  Metallic  Paint  Co., 

Prince  Metallic  Paint  Co.  v.  573 

Carlan,  Stone  v.  104 

Carlier,  Killet  v.  334 

Carlile,  Cartier  v.  204 

Caruiichel  v.  Latimer  521 

Carnrick  v.  Morson  543 

Carpenter,  Taylor  v.  (1)  78 

(2)  83 

(3)  84 

Carroll  ».  Ertheiler  669 

Carter,  R.  v.  287 

Cartier  v.  Carlile  204 

v.  May  200 

v.  Westhead  199 

Carver  v.  Bowker  581 

v.  Pinto  Leite  356 

Case,  Morrison  v.  394 

Cassin,  Burke  v.  415 

Caswell  v.  Davis  289 

Cathery,  Farina  v.  275 

Cave  v.  Myers  304 

Chadsey,  Genin  v.  330 

Chance  v.  Sheppard  317 

Chandler,  Cocks  v.  351 

Chapman,  Bullock  v.  95 

Chappell  v.  Davidson  136 

v.  Sheard  132 

Charbonnel,  Robineau  v.  498 

Charleson  y.  Campbell  520 

Chase  v.  Mayo  523 

Cheavin  v.  Walker  528 

Chissum  v.  Dewes  45 
Chooneeloll  Mullick,  Orr  Ewing 

v.  241 

Choynski  v.  Cohen  336 

Christie  v.  Christie  414 


Christy  v.  Murphy  137 

Chubb  v.  Griffiths  255 

Churton  v.  Douglas  172 

Clark  v.  Clark  148 
Delaware    and    Hudson 

Canal  Co.  ».  327 

v.  Freeman  93 

v.  Leach  210 

Clarke,  Spottiswoode  ».  85 

Wylam  v.  488 

Clemens  v.  Such  429 

Clement  v.  Maddick  174 

Clements,  Shipwright  v.  350 

Closs,  R.  v.  155 

Clowes  v.  Hogg  345 

Clybouw,  Moet  ».  533 

Clyde,  Winsor  v.  396 

Coats  v.  Holbrook  79 

Cocks  v.  Chandler  351 

Coe  v.  Bradley  489 

Coffeen  v.  Brunton  (1)  99 

(2)  109 

Coggin,  Kidder  &  Co.  In  re  490 
Cohen,  Choynski  v.  336 
Coker,  Hitchcock  v.  58 
Cole,  Popham  v.  425 
Colladay  v.  Baird  186 
Collender,  Phelan  v.  479 
Collingridge,  Cook  ».  37 
Collins,  Crawshay  v.  14 
Collins  Co.  v.  Brown  151 
v.  Cowen  152 
v.  Reeves  164 
v.  Walker  171 
Colman  v.  Crump  579 
Colonial  Life  Assurance  Co.  v. 
Home  &  Colonial  Assurance 
Co.  (Limited)  236 
Colton  v.  Thomas  305 
Commissioners  of  Inland  Rev- 
enue, Potter  v.  1 28 
Comstock  v.  White  180 
Condy  v.  Mitchell  561 
Congress  &  Empire  Spring  Co. 
v.     High     Rock     Congress 
Spring   Co.  354 
Connell  v.  Reed  670 
Conolly,  Baxter  v.  32 
Consolidated    Fruit    Jar    Co. 

In  re  578 

Consolidated  Fruit  Jar  Co.  v. 

Dorflinger  444 

Consolidated  Fruit  Jar  Co.  v. 

Thomas  665 

Constable  &  Co.  v.  Brewster  39 

Cook  v.  Collingridge  37 


IX 


TABLE  OF  CASES. 


Cook  v.  Starkweather  395 

Cooper,  Hennessy  v.  549 

v.  Hood  168 

v.  Watson  5 

Cope,  Dakin  v.  48 

v.  Evans  433 

Corcoran,  Witt  v.  423 

Corns  v.  Griffiths  420 

Cornwall,  In  re  (1)  563 

(2)  565 

Cornwell,  Morse  v.  445 

Correspondent  Newspaper  Co. 

v.  Saunders  246 

Corwin  v.  Daly  187 

Coslake  v.  Till  42 

Cotton  i'.  Gillard  447 

Couston,  Moet  v.  235 

Cowen,  Collins  Co.  v.  152 

Crabb,  Blackwell  v.  274 

Crawshay  v.  Collins  14 

v.  Thompson  72 

Croft  v.  Day  (1)  76 

(2)  77 

Crookes  v.  Fetter  181 

Crowley,  Walton  v.  138 

Crump,  Colman  v.  579 

Cruttwell  v.  Lye  1 7 

Cumston,  Hallett  ».  891 

Curling,  England  v.  75 

Currie,  Wotherspoon  v.  329 

Curtis  v.  Bryan  291 

Cutter,  Hardy  v.  427 

D. 

Dakin  v.  Cope  43 

Dale  v.  Smithson  195 

Daly,  Corwin  v.  187 

Isaacs  v.  440 

Darbey  v.  Wlritaker  153 

Darley,  Hagg  v.  g04 

Davidson,  Chappell  v.  136 

Davies,  Dawes  v.  426 

v.  Hodgson  158 

Davis,  Caswell  v.  289 

v.  Kendall  103 

v.  Kennedy  281 

Davol  Mills,  Ferguson  ».  307 

Dawber,  Bass  v.  310 

Dawes  v.  Davies  426 

Dawes  &  Fanning,  Ex parte        382 

Dawson,  Labouchere  v.  385 

Day  v.  Binning  47 

v.  Brownrigg  631 

Croft  v.  (1)  76 

(2)  77 


Day  v.  Day  21 
Day  &  Kossutb,  Austria  (Em- 
peror of)  v.  197 
Dayton  v.  Wilkes  178 
De  Conto,  Stephens  v.  295 
Decker  v.  Decker  525 
Deere  &  Co.,  Candee,  Swan  & 

Co.  v.  339 

Deiz  v.  Lamb  266 

Del  Valle  v.  Mayer  326 
Delaware   and   Hudson    Canal 

Co.  v.  Clark  327 
Delondre  v.  Shaw  44 
Dence  v.  Mason  (1)  534 
(2)  570 
Denham,  Hirst  v.  400 
Denicke,  Reeves  v.  368 
Dent  v.  Turpin  196 
Derringer  v.  Plate  249 
Devlin  v.  Devlin  463 
Dewes,  Chissum  v.  45 
Dey,  Swift  v.  245 
Diaper,  Orr  v.  519 
Dibrell,  Blackwell  v.  590 
Dick  &  Co.  In  re  493 
Dickens,  Bradbury  v.  1 73 
Dicks,  Weldon  v.  638 
Dickson  v.  McMaster  &  Co.  260 
Dixon  v.  Fawcus  194 
v.  Holden  311 
v.  Jackson  .  271 
Dixon  Crucible  Co.  v.  Guggen- 
heim 331 
Dobell,  Newling  v.  303 
Dole  Brothers,  In  re  577 
Dorflinger,  Consolidated  Fruit 

Jar  Co.  v.  444 
Dougherty  v.  Van  Nostrand           64 

Douglas,  Churton  v.  172 

Hammond  v.  9 

Downman,  Motley  v.  61 

Downs,  England  v.  74 

Drat,  Ward  v.  607 

Du  Boulay  v.  Du  Boulay  312 

Dunbar  v.  Glenn  529 

Duncan,  Hoffman  ».  122 

Dundas,  R.  v.  120 

D'Utassey,  Faber  v.  355 

Dutcher  Temple  Co.  In  re  371 

Duwel  v.  Bohmer  613 

E. 

Eagle  Pencil  Co.  In  re  522 

Easterbrook,  Saxby  v.  606 

Ede  Bros.  &  Co.  Ex  parte  632 


TABLE  OF  CASES. 


Edelsten  v.  Edelsten  213 

v.  Vick  119 

Edgington  v.  Edgington  237 
Edinburgh   Correspondent 

Newspaper,  In  re  34 

Edmonds  v.  Benbow  33 
Edwards,  Apollinaris  Co.  v.         509 

Ehlers,  Siegert  v.  432 

Eichele,  Peltz  v.  485 

Elkan,  Upmann  v.  369 
Ellinger     &     Co.,     Twentsche 

Stoom  Bleekery  Goor  v.  583 
Ellis  v.  Zeilen  &  Co.  348 
Emerson  v.  Badger  309 
Emery,  Mickle  v.  495 
England  v.  Curling  75 
v.  Downs  74 
English,  In  re  342 
Eno  v.  Stephens  609 
Ertheiler,  Carroll  v.  669 
Estcourt  v.  Estcourt   Hop  Es- 
sence Co.  449 
Esterbrook,  Gillott  v.  269 
Evans,  Brook  v.  190 
Cope  v.  433 
v.  Hughes  127 
Turner  v,  114 
Everett,  Smith  v.  1 76 


E. 

Faber  v.  D'Utassey  355 

v.  Faber  278 

v.  Hovey  481 

Falkinburg  v.  Lucy  296 

Farina,  In  re  (I)  592 

(2)  642 

(3)  654 
v.  Cathery  275 
v.  Gebhardt  118 
v.  Shaw  113 
v.  Silver-lock  130 

Farlow,  Bozon  v.  22 

Farr  v.  Pearce  28 

Fassett,  Filley  v.  313 

Fawcus,  Dixon  v.  194 
Featherstonhaugh  v.  Fenwick       1 6 

Fenn  v.  Bolles  166 
Fenwick,  Featherstonhaugh  v.      16 

Ferguson  o.  Davol  Mills  307 

Fetridge  v.  Merchant  145 

v.  Wells  144 

Field  v.  Lewis  280 

Filkins  v.  Blackman  502 

Filley  v.  Fassett  313 


Findlater,  Raggett  v.  431 
Siegert  v.  591 
Finlay,  Robinson  v.  585 
Fisher,  Seeley  v.  67 
Fisher  &  Co.  (Limited)  v.  Apol- 
linaris Co.  (Limited)  457 
Flanagan,  Matsell  v.  270 
Flavel  v.  Harrison  116 
Fleming,  McLean  v.  580 
v.  Newton  94 
Flint,  Leidersdorf  v.  629 
Floyd,  Bowman  o.  201 
Folgham,  Green  v,  38 
Foot  v.  Lea  107 
Ford  v.  Foster  384 
Foss,  Ex  parte,  In  re  Baldwin     159 
Foster,  Burrows  v.  207 
Ford  v.  384 
v.  Megevand  499 
Fowle  v.  Spear  90 
Fox,  Millington  v.  63 
Fran9ais,  Hobbs  v.  191 
Francis  &  Mallon,  In  re  375 
Franks,  Pierce  v.  81 
v.  Weaver,  87 
Freeman,  Browne  v.  (1)  230 
(2)  424 
Clark  v.  93 
Frese  v.  Bachof  (1)  484 
(2)  603 
Fullwood  v.  Fullwood  (1)  421 
(2)  602 
Fulton  v.  Sellers  279 


G. 

Ganton,  Lemoine  v.  125 
Gardner  v.  Bailey  365 
Harrison  v.  25 
Garner,    Amoskeag    Manufac- 
turing Co.  v.  (1)  314 
(2)  500 
Garner,  Merrimack  Manufact- 
uring Co.  v.  134 
Garnhart,  M'Cartney  v.  332 
Gaubert,  Ansell  v.  163 
Gebhardt,  Farina  v.  118 
Gee  v.  Pritchard  30 
Geisendorf,  Sohl  v.  367 
Genin  v.  Chadsey  330 
Gibblett  v.  Read  3 
Gibbs,  Missouri  (State  of)  v.  436 
Gibson,  Banks  v.  248 
Gillard,  Cotton  v.  447 
Gillespie  &  Co.  v.  Marshall  648 


XI 


TABLE  OF  CASES. 


Gillies,  Taylor  v.  448 

Gillis  v.  Hall  (1)  335 

(2)  353 

Gillott  v.  Esterbrook  269 

v.  Kettle  126 

Gilman  v.  Hunnewell  541 

Gladstone,  Steuart  v.  605 

Glen  &  Hall  Manufacturing  Co. 

v.  Hall  443 

Glendon  Iron  Co.  ».  Uhler  439 

Glenn,  Dunbar  v.  529 

Glenny  v.  Smith  247 

Glines,  In  re  471 

Godillot,  In  re  446 

v.  Hazard  461 
Goodyear  Rubber  Co.  In  re         547 

Gordon,  In  re  572 

Goulard,  Wolfe  v.  179 

Gouraud  v.  Trust  460 

Gout  v.  Aleploglu  51 

Graham,  In  re  412 

v.  Plate  347 

Graham  &  Co.  v.  Kerr,  Dods 

&  Co.  315 

Graveley  v.  Winchester  272 

Graves,  Smale  v.  102 
Gray,  Bulloch,  Lade  &  Co.  v.     452 

v.  Koch  363 
Gray  &   Co.,   Wotherspoon   & 

Co.  v.  227 
Gray  &  Gosling,  R.  v.  183 
Green,  In  re  473 
v.  Folgham  38 
v.  Rooke  889 
t>.  Shepherd  262 
Griffiths,  Chubb  ».  255 
Corns  v.  420 
Grillon  v.  Guenin  532 
Grimshaw,  Ex  parte  535 
Grocer  Publishing  Co.,  Ameri- 
can Grocer  Publishing  Asso- 
ciation v,  503 
Grosvenor,  Seabury  v.  562 
Gue"nin,  Grillon  v.  532 
Guggenheim,    Dixon    Crucible 

Co.  v.  331 

Guinness  v.  Heap  617 

v.  Ullmer  89 

Guy,  Bunn  v.  11 


H. 


Hagg  v.  Darley 
Haley,  Lee  v. 
Hall  v.  Barrows 


604 
325 
215 


Hall,  Gillis  v.  (1)  335 

(2)  353 
Glen  &  Hall  Manufacturing 

Co.  v.  443 

v.  Hall  129 

Hall  and  Co.  In  re  596 

Hallett  v.  Cumston  391 

Hammond  v.  Douglas  9 
Hampshire    and    North   WTilts 

Bank,  London   and  County 

Banking  Co.  v.  618 
Hanbury,  Liebig's   Extract  of 

Meat  Co.  v.  286 

Hand,  Worral  v.  6 

Hankinson,  In  re  464 

Hardy  v.  Cutter  427 

Hargreaves,  In  re  645 

v.  Smith  338 

Harper  v.  Pearson  193 

Harrington  v.  Libby  538 

Harris,  Palmer  v.  308 

Harrison,  Flavel  v.  116 

v.  Gardner  25 

v.  Taylor  244 

Hart,  Wolfe  v.  653 

Harter  v.  Souvazoglu  454 

Hately,  Burgess  v.  169 

Hauthaway,  In  re,  (1)  357 

(2)  377 

Hayward,  Parsons  v.  206 
Hazard,  Godillot  v.  461 
Heap,  Guinness  v.  617 
Heath  v.  Wright  133 
Helleley,  Johnson  ».  238 
Helmbold  v.  Helmbold  Man- 
ufacturing Co.  575 
Hemmons,  Weston  v.  517 
Henderson  v.  Jorss  198 
Hendrickx,  Laferme  (Com- 

pagnie)  v.  512 

Henley,  Rose  v.  551 

Hennessy  v.  Cooper  549 

v.  Hogan  651 

v.  Kennett  556 

v.  Rohmann,  Osborne 

&  Co.  531 

v.  Wheeler  483 

v.  White  650 

Henriques,  Howard  v.  108 

Henry  v.  Price  48 

High    Rock    Congress  Spring 

Co.,     Congress     &  Empire 

Spring  Co.  v.  354 

Hill,  Batty  v.  218 

Blanchard  v.  2 

Hills,  Burgess  v.  170 


XII 


TABLE  OF  CASES. 


Hine  v.  Lart  80 

Hinrichs  v.  Berndes  594 

Hirsch  v.  Jonas  494 
Hirschfeld,  Leather  Cloth  Co. P. 

(1)  214 

(2)  224 

(3)  252 

Hirst  P.  Denham  400 

Hitchcock  v.  Coker  58 

Hopkins  v.  216 

Hobbs  v.  Fran9ais  191 

Hodgson,  Davies  v.  158 

Hoffman  v.  Duncan  122 

Hogan,  Hennessy  v.  651 

Hoge,  Moorman  p.  373 

Hogg,  Clowes  v.  345 

v.  Kirby  10 

Maxwell  p.  264 

v.  Maxwell  265 

Holbrook,  Coats  v.  79 

Holden,  Dixon  v.  311 

Hollins,  Campbell  v.  548 

Holloway  v.  Holloway  106 

Holmes,  Booth  &  Haydens  ». 

Holmes,    Booth    &    Atwood 

Manufacturing  Co.  340 

Holt,  Aubin  v.  135 

Home  and  Colonial  Assurance 

Co.  (Limited),  Colonial  Life 

Assurance  Co.  v.  236 

Hood,  Cooper  v.  168 

Hookham  v.  Pottage  398 

Hoosier  Drill  Co.  v.  Ingels  627 

Hopkins  v.  Hitchcock  216 

Horn,  Sawyer  p.  667 

Horsburgh,  In  re  597 

Hosteller  v.  Anderson  652 

v.  Vo winkle  366 

Houghlon,  Rowley  v.  301 

Hovenden  v.  Lloyd  337 

Hovey,  Faber  v.  481 

How,  Pidding  v.  60 

Southern  v.  1 

Howard  v.  Henriques  108 

Howe  v.  Howe  Machine  Co.  284 

v.  M'Kernan  203 

v.  Searing  185 

Whittaker  v.  66 

Howe  Machine  Co.,  Howe  v.       284 

Hudson  v.  Bennett  261 

v.  Osborne  323 

Hughes,  Evans  v.  127 

Humphrey,  Peterson  v.  149 

Hunnewell,  Oilman  v.  541 

Hunt  P.  Maniere  239 

Hunter,  R.  ».  287 


Hutton,  Kelly  v. 
Hyde  &  Co.  In  re 


292 
593 


I. 


Imbs,  In  re  518 

India  Rubber  Comb  Co.  In  re  476 

v.  Meyer,  475 

Ingels,  Hoosier  Drill  Co.  v.  627 

Ingram  v.  Stiff  175 

Isaacs  v.  Daly  440 

Isaacson  v.  Thompson  381 


J. 


Jackson,  Dixon  v.  271 

James  u.  James  388 

Newbery  v.  24 

Oldham  v.  209 

Spicer  v.  46 

Jaques,  Jollie  i».  105 

Jarrett,  Booth  v.  524 

Jelley,  Son  &  Jones,  In  re  616 

Jendwine  v.  Slade  8 

Jenkins,  Wade  v.  192 

Johnson  t;.  Helleley  238 

Kiddt>.    '  666 

Sohier  v.  408 

Williams  v.  150 

Johnson  &  Co.  In  re  404 

Johnston,  Byron  (Lord)  v.            23 

Johnston  &  Co.,  Orr  Ewing  & 

Co.  v.  646 
Jollie  P.  Jaques  105 
Jonas,  Hirsch  v.  494 
Jones,  Canham  v.  19 
R.  p.  182 
Jorss,  Henderson  v.  198 
Junior  Army  and  Navy  Stores 
(Limited),  Army  and  Navy 
Cooperative    Society  (Lim- 
ited) P.  640 
Jurgensen  v.  Alexander  211 


K. 

Kane  &  Co.  In  re 
Keen,  Mellersh  p. 
Kelly  P.  Byles 

v.  Hutton 
Kendall,  Davis  v. 
Kennedy,  Davis  p. 

p.  Lee 
Kennett,  Hennessy  p. 


480 
177 
661 
292 
103 
281 
27 
556 


Xlll 


TABLE  OF  CASES. 


Kerr,  Dods  &  Co.,  Graham  & 

Co.  v.  315 

Ketcham,  Weston  v.  (1)  455 

(2)  487 

Kettle,  Esterbrook  v.  126 

Kidd  v.  Johnson  666 

Kidd  &  Co.  v.  Mills,  Johnson  & 

Co.  437 

Kimball,  In  re  553 

Kimball     &    Morton,      Singer 

Manufacturing  Co.  v,  413 

Kinahan  v.  Bolton  228 

King,  Exparte  341 

King  &  Co.,  Strahan  &  Co.  v.    539 

Kinney  v.  Allen  557 

v.  Basch  542 

Kirby,  Hogg  v.  10 

Knight,  Barrows  v.  184 

Knott  v.  Morgan  57 

Prudential        Assurance 

Co.  v.  453 

Welch  v.  157 

Koch,  Gray  r.  363 

Kuhn&Co.  In  re  637 


L. 


Labouchere  v.  Dawson  385 
Laferme  (Compagnie)  v.  Hen- 

drickx  512 

Laight,  Shrimpton  v.  123 

Laird  v.  Wilder  418 

Lamb,  Deiz  v.  266 

Lamplough  v.  Balmer  288 

Landgraff,  Stokes  v.  121 

Langdon,  Lewis  v.  55 
Lamed,  Lowell  Manufacturing 

Co.  v.  428 

Larsen,  Singer  Man.  Co.  v.  659 

Lart,  Hine  v.  80 

Latimer,  Carmichel  v.  521 
Lautz  Bros.  &  Co.  v.  Schultz  & 

Co.  496 

Lawrence  &  Co.  Ex  parte  630 

In  re  504 
Lawrence  Man.  Co.  v.  Lowell 

Hos.  Co.  673 

Lawson  v.  Bank  of  London  140 

Lazar,  Woodward  v.  212 

Lazenby  v.  Lazenby  160 

v.  White  (1)  344 

(2)  346 

Lea,  Foot  v.  107 

v.  Millar  513 

v.  Wolff  407 

Leach,  Clark  v.  210 


Leather  Cloth  Co.  (Limited)  v. 
American  Leather  Cloth  Co. 
(Limited)  223 

Leather  Cloth  Co.  (Limited)  v. 

Hirschfeld  (1)    .  214 

Leather  Cloth  Co.  (Limited)  v. 

Hirschfeld  (2)  224 

Leather  Cloth  Co.  (Limited)  v. 

Hirschfeld  (3)  252 

Leather  Cloth  Co.  (Limited)  v. 

Lorsont  324 

Ledger  v.  Ray  550 

Lee  v.  Haley  325 

Kennedy  v.  27 

Leidersdorf  v.  Flint  629 

Lemoine  v.  Ganton  125 

Leonardt,  In  re  610 

Leuchars,  Barnett  v.  253 

Levy  v.  Walker  639 

Lewis,  Field  v.  280 

v.  Langdon  55 

Libby,  Harrington  v.  538 

Liebig's  Extract  of  Meat  Co.  v. 

Hanbury  286 

Linoleum  Manufacturing  Co.  v. 

Nairn  536 

Lisner,  In  re  600 

Llewellyn  v.  Rutherford  462 

Lloyd,  Hovenden  v.  337 

Locke,  Bell  v.  65 

Lock  wood  v.  Bostwick  319 

Loftus,  Rose  v.  608 

London  Assurance  v.  London 
and  Westminster  Assurance 
Corporation  (Limited)  221 

London  and  County  Banking 
Co.  v.  Hampshire  and  North 
Wilts  Bank  618 

London  and  Provincial  Joint 
Stock  Life  Assurance  Co., 
London  and  Provincial  Law 
Assurance  Society  v.  88 

London  and  Provincial  Law 
Assurance  Society  v.  London 
and  Provincial  Joint  Stock 
Life  Assurance  Co.  88 

London  and  Westminster  As- 
surance   Corporation    (Lim- 
ited), London  Assurance  v.       221 
Longman  v,  Tripp  12 

v.  Winchester  15 

Loog,     Singer    Manufacturing 

Co.  v.  635 

Lorsont,  Leather  Cloth  Co.  v.     324 
Lowell  Hos.  Co.,  Lawrence,  &c. 
Co.  v.  673 


XIV 


TABLE  OF  CASES. 


Lowell  Manufacturing  Com- 
pany v.  Lamed  428 
Lucy,  Falkinburg  v,  296 
Lumley  v.  Wagner  112 
Lye,  Cruttwell  v.  17 
Lysaght,  In  re  623 

M. 

Me  Adam,  Morgan  r.  267 

McAndrew  v.  Bassett  234 

McBride,  Procter  et  al.  v.  657 

McCardel  v.  Peck  233 

McCartney  v.  Garnhart  332 

McCormick  v.  McCubbin  35 

McCubbin,  McCormick  v.  35 

Macdonald  v.  Richardson  165 
McGowan,     McGowan     Bros. 

Pump  Machine  Co.  v.  406 
McGowan  Bros.  Pump  Ma- 
chine Co.  v.  McGowan  406 
Mclntyre  v.  Belcher  220 
McKernan,  Howe  v.  203 
Mackintosh,  Scott  v.  20 
McLean  v.  Fleming  580 
McMaster  &  Co. ,  Dickson  v.  260 
McXulty,  Powell  v.  26 
Mack  v.  Fetter  403 
Macrae,  Young  v.  205 
Maddick,  Clement  v.  174 
Major,  Turner  v.  202 
Manhattan  Medicine  Co.  v. 

Wood  628 

Maniere,  Hunt  v.  239 
Marcovitch   v.    Bramble,  Wil- 

kins  &  Co.  595 

Marsh  v.  Billings  111 

Marshall,  Gillespie  &  Co.  v.  648 

v.  Ross  316 

v.  Watson  162 

Martin  v.  Wright  52 

Mason,  Dence  v.  (1)  534 

(2)  570 

Smith  v.  458 

Massam    u.    J.    W.    Thorley's 

Cattle  Food  Co.        560,  564,  668 
Masury,  Brooklyn  White  Lead 

Co.  v.  154 

Matsell  v.  Flanagan  270 

Maxfield,  Wilson  v.  459 

Maxwell  v.  Hogg,  264 

Hogg  v.  265 

May,  Cartier  v.  200 

Mayer,  Del  Valle  ».  326 

Mayo,  Chase  v.  523 

Megevand,  Foster  v.  499 


Meikle,  In  re  515 
Mellersh  v.  Keen  177 
Menck,  Partridge  v.  91 
Meneely  v.  Meneely  472 
Mercer,  Brown  v.  435 
Merchant,  Fetridge  v.  145 
Merchant    Banking    Company 
of  London  (Limited)  v.  Mer- 
chants' Joint  Stock  Bank  619 
Meriden  Britannia  Co.,  Board- 
man  v.  302 
Meriden  Britannia  Co.   v.  Par- 
ker 409 
Merrimack   Manufacturing  Co. 

v.  Garner  134 

Messerole  v.  Tynberg  300 

Metzler  v.  Wood  587 
Meyer,    India    Rubber   Comb 

Co.v.  475 

Mickle  v.  Emery  495 

Milbourn,  Bond  v.  383 

Millar,  Lea  v.  513 

Millington  v.  Fox  63 
Mills,  Johnson  &  Co.,  Kidd  & 

Co.  v.  437 

Milner  v.  Reed  328 

Missouri  (State  of)  v.  Gibbs  436 

Mitchell,  In  re  (1)  568 

(2)  611 

Condy  v.  561 

Moat,  Morison  v.  110 

Moet  v.  Clybouw  533 

v.  Couston  235 

v.  Pickering  567 

Montague  v.  Moore  242 

Moore,  Apollinaris  Co.  v.  675 

Montague  v.  242 

Tallcotv.  478 

Moorman  v.  Hoge  373 

Morgan,  Knott  v.  57 

v.  Me  Adam  267 

Morgan  Sons  Co.  v,  Troxell  674 

Morison  v.  Moat  110 

v.  Salmon  68 

Morris  v.  Moss  131 

Morrison  v.  Case  394 

Morse  v.  Cornwell  445 

v.  Worrell  445 

Morson,  Carnrick  v,  543 

Mortimer,  Prowett  v.  141 

Moses  v.  Sargood,  Ewen  &  Co.  636 

Moss,  Boon  v.  576 

Morris  v.  131 

Motley  v.  Downman  61 

Munro,  Bain  v.  588 

Murphy,  Christy  v.  137 


XV 


TABLE  OF  CASES. 


Myers  ».  Baker 
Cave  v. 


167 
304 


N. 

Nairn,  Linoleum  Manufacturing 

Co.  v.  536 
Newbery  v.  James  24 
Newby  v.  Oregon  Central  Rail- 
way Co.  318 
Newling  v.  Dobell  303 
Newman  v.  Alvord  282 
Newton,  Fleming  v.  94 
Nixey  v.  RofFey  343 
Noah,  Snowden  ».  41 
Norfolk,  Peabody  v.  290 
Norman,  Radde  v.  397 
Norris,  Rivero  v.  299 
Norrish,  Apollinaris  Co.  ».  465 
Norton,  Bradley  ».  250 
Nowill,  Rodgers  v.  (1)  82 
(2)  115 


O. 

O'Connor,  Wolmershausen  v.  552 
Ogden,  R.  v.  .  54 

Oldham  v.  Jamea  209 

Oregon  Central  Railway  Co., 

Newby  v.  318 

Orr  v.  Diaper  519 

Orr  Ewing  &  Co.,  In  re  586 

Orr  Ewing  &  Co.  v.  Chooneeloll 

Mullick  241 

Orr  Ewing  &  Co.  v.  Johnston  & 

Co.  646 

Osborne,  Hudson  v.  323 

Williams  v.  254 

Osgood  v.  Allen  410 

v.  Rockwood  439 


P. 


Paine,  Stevens  v. 
Palmer,  In  re 

v.  Harris 
Park,  In  re 
Parker,  In  re 


Meriden  Britannia  Co, 


Parsons  v.  Hayward 
Partridge  v.  Menck 


297 
378 
308 
544 

582 

409 

206 

91 


Paton,  In  re  601 
Payne,  Blofeld  v.  50 
Peabody  v.  Norfolk  290 
Peake,  Boulnois  v.  294 
Pearce,  Fair  v.  28 
Pearson,  Harper  v.  193 
Peck,  McCardel  v.  233 
Peel,  Stephens  v.  273 
Pelsall  Coal  and  Iron  Co.,  Bar- 
rows v.  530 
Peltz  v.  Eichele  485 
Perry  v.  Truefitt 

Peru  (Republic  of)  v.  Reeves     482 

Peters,  Swift  v.  554 

Peterson  v.  Humphrey  149 

Weed  v.  387 
Peto,  Ponsardin  v.  Exparte  Uzi- 

elli  229 

Petter,  Crookes  v.  181 

Mack  v.  403 

Phalon,  Burnett  v.  277 

v.  Wright  232 

Phelan  v.  Collender  479 

Philp,  Rodgers  v. 

Pickering,  Moet  v.  567 

Pidding  v.  How  60 

Pierce  v.  Franks  81 

Pillow,  Barnard  v.  293 

Pinto  Leite,  Carver  v.  356 

Plate,  Derringer  v.  249 

Graham  v.  347 
Ponsardin  v.  Peto,  Exparte  Uzi- 

elli  229 
Popham  v.  Cole  425 
v.  Wilcox  425 
Porter  Blanchard's  Sons,  In  re   358 
Pottage,  Hookham  i;.  398 
Potter  v.  Commissioners  of  In- 
land Revenue  128 
Powell,  In  re  589 
v.  McNulty  526 
Seltzer  v.  374 
Power  v.  Barham  56 
Pratt,  In  re  589 
Partt  &  Farmer,  In  re  527 
Price,  Henry  v.  48 
Prince    Metallic    Paint  Co.  v. 

Carbon  Metallic  Paint  Co.       573 

Pritchard,  Gee  v.  30 
Procter  &  Gamble  v.  McBride      657 

Provezende,  Seixo  v.  256 

Prowett  v.  Mortimer  141 

Prudential    Assurance  Co.    v. 

Knott  453 

Purser  v.  Brain  92 


xvi 


TABLE  OF  CASES. 


Q. 

Quiddington,  Robertson  v. 


R. 

R.  v.  Ardley 
v.  Biyan 
v.  Carter 
v.  Gloss 
v.  Dundas 
v.  Gray  &  Gosling 
v.  Hunter 
v.  Jones 
v.  Ogden 
v.  Smith 

v.  Suter  &  Coulson 
Rabone  Bros.  &  Co.  In  re 
Radde  v.  Norman 
Rader  &  Co.  In  re 
Raggett  v.  Findlater 
Ransome  v.  Bentall 
Ratcliff,  Woollam  v. 
Ray,  Ledger  ». 
Read,  Gibblett  v. 
Reed,  Connell  v. 
Milner  v. 

Reeves,  Collins  Co.  v. 
v.  Denicke 

Peru  (Republic  of)  v. 
Reid  v.  Sibbald 
Reynolds  v.  Bullock 

Smith  v.  (1) 
(2) 
(3) 

Southern  v. 

Richards  v.  Williamson 
Richardson,  In  re 

Macdonald  v. 
Rillet  v.  Carlier 
Rivero  v.  Norris 
Roach,  In  re 
Roberts,  In  re  (I) 
(2) 
(3) 
(4) 

Robertson  v.  Quiddington 
Robineau  v.  Charbonnel 
Robinson  v.  Finlay 
Ward  v. 

Rockwood,  Osgood  u. 
Rodgers  v.  No  will  (1) 

(2) 

v.  Philp 
v.  Rodgers 
b 


189 


349 
147 
287 
155 
120 
183 
287 
182 

54 
161 
285 
643 
397 
612 
431 

53 

217 

550 

3 

670 
328 
164 
368 
482 
438 
615 
401 
402 
511 
243 
441 
416 
165 
334 
299 
516 
359 
360 
361 
362 
189 
498 
585 
585 
430 

82 
115 
352 
442 


Roffey,  Nixey  v.  343 

Rogers  v.  Taintor  283 

Rohland,  In  re  497 
Rohmann,  Osborne  &  Co.,  Hen- 

nessy  &  Co.  v.  531 

Rolt  v.  Bulmer  614 

Rooke,  Green  v.  389 

Rose  v.  Henley  551 

v.  Loftus  608 

Rosing,  In  re  621 

Ross,  Marshall  v.  316 

Rotherham,  In  re  647 

Rothschild,  In  re  456 

Rouch,  Burfield  v.  208 

Routh  v.  Webster  86 

Rowe  &  Post,  In  re  491 

Rowland  v.  Breidenbach  386 

Scott  v.  393 

Rowley  v.  Houghton  301 
Royal  B'k'g  Powder  Co.  v.  Mc- 

Quade  670 
Royal  B'k'g  Powder  Co.  v.  Royal 

Chemical  Co.  656 
Royal  Chem.  Co.,  Royal  B.  P. 

Co.  v.  656 

Rubber  Clothing  Co.  In  re  507 

Rudderow  v.  Huntington  101 

Rush  ton,  Ayer  v.  574 

Rutherford,  Llewellyn  v.  462 


S. 


Salamon,  In  re  569 
Sales,  Pollard  &  Co.  Ex  parte  620 
Salmon,  Morison  v.  68 
Samson,  Steinthal  v,  546 
Samuel  v.  Berger  143 
Sands,  Woods  v.  467 
Sargood,  Ewen  &  Co.,  Moses  v.  636 
Saunders,  Correspondent  News- 
paper Co.  v.  246 
Saunion  &  Co.  In  re  625 
Sawyer  v.  Horn  667 
Saxby  v.  Easterbrook  606 
Saxony,  Ex  parte  King  of  598 
Schiele  v.  Brakell  219 
Schultz  &  Co.,  Lautz  Bros.  & 

Co.  v.  496 

Schweitzer  v.  Atkins  298 

Scott  v.  Mackintosh  20 

v.  Rowland  393 

v.  Scott  268 

Scoville  v.  Toland  97 

Seabury  r.  Grosvenor  562 

Searing,  Howe  v.  185 


xvil 


TABLE  OF  CASES. 


Sedon  v.  Senate  18 

Seeley  v.  Fisher  67 

Seixo  v.  Provezende  256 

Selby  v.  Anchor  Tube  Co.  566 

Sellers,  Fulton  v.  279 

Seltzer  v.  Powell  374 

Senate,  Sedon  v.  18 

Shackle  v.  Baker  13 
Shakespear,  Wheeler  &  Wilson 

Manufacturing  Co.  v.  322 

Shaw,  Delondre  v.  44 

Farina  v.  113 

Sheard,  Chappellw.  132 

Shepherd,  Green  v.  262 

Sheppard,  Chance  v.  317 

Sherwood  v.  Andrews  263 

Shipwright  v.  Clements  350 

Shrimpton  v.  Laight  123 

Sibbald,  Reid  v.  438 

Siegert  v.  Ehlers  432 

v.  Findlater  591 

Silverlock,  Farina  v.  130 

Simpson  &  Sons,  In  re  508 

Singer  Manuf.  Co.  v.  Brill  672 

v,  Larsen  659 

v.  Loog  635 

v.  Wilson  477 

Singer  Manuf.  Co.  v.  Kimball  & 

Morton  413 

Singleton  v.  Bolton  4 

Slade,  Jendwine  v.  8 

Smale  v.  Graves  102 

Smith  v.  Everett  176 

Glenny  v.  247 

Hargreaves  v.  338 

r.  Mason  458 

R.  v.  161 

v.  Reynolds  (1)  401 

(2)  402 

(3)  511 
Wedgwood  v.  96 
v.  Woodruff  276 

Smithson,  Dale  v.  195 
Stewart  u.  142 
Snowden  v.  Noah  41 
Socie"te  Anonyme  des  Mines  et 
Fonderies    de     Zinc    de    la 
Vieille  Montague  v.  Baxter     559 
Sohier  v.  Johnson  408 
Sohl  v.  Geisendorf  367 
Southern  v.  How  1 
v.  Reynolds  243 
Souvazoglu,  Harter  v.  454 
Spear,  Amoskeag  Manufactur- 
ing Co.  v.  100 
Fowle  v.  90 


Spence,  Williams  v.  225 

Spicer  v.  James  46 

Spottiswoode  v.  Clarke  85 

Spratt's  Patent  v.  Ward  &  Co.    644 

Standish  v.  Whitwell 

Starkweather,  Cook  v.  395 

Steffens,  U.  S.  v.  658 

Steinthalu.  Samson  546 

Stephens,  Ex  parte  (1)  505 

(2)  510 

v.  De  Conto  295 

Eno  v.  609 

v.  Peel  273 

Sternberger  v.  Thalheimer  417 

Stetson,  Town  v.  306 

v.  Winsor  396 

Steuart  v.  Gladstone  605 

Stevens  v.  Paine  297 

Stewart  v.  Smithson  142 

Stiff,  Ingram  v.  175 

Stokes  v.  Landgraff  121 

Stone  v.  Carlan  104 

Stonebraker  v.  Stonebraker  333 

Strahan  &  Co.  v.  King  &  Co.  539 

Strange,  Albert  (Prince)  v.  98 

Such,  Clemens  v.  429 

Sullivan,  Byass  v.  188 

Suter  &  Coulson,  R.  v.  285 

Sweet,  Archbold  v.  49 

Swift  v.  Dey  245 

v.  Peters  554 

Swiss    Condensed     Milk     Co., 

Anglo- Swiss  Condensed  Milk 

Co.  v.  370 

Sykes  v.  Sykes  40 


T. 

Taintor,  Rogers  v.  283 

Tallcot  v.  Moore  478 

Taylor  v.  Bemis  231 

v.  Bothin  664 

v.  Carpenter  (1)  78 

(2)  83 

(3)  84 
v.  Gillies  448 
Harrison  v.  244 
r.  Taylor  124 

Thalheimer,  Sternberger  r.  417 

Thomas,  Ex  parte  69 

In  re  634 

Colton  v.  305 

Cons.  Fr.  Jar  Co.  v.       665 

Thompson,  Crawshay  v.  72 

Isaacson  v.  381 


xvill 


TABLE  OF  CASES. 


Thomson  v.  Winchester  59 

Thorley's  Cattle  Food  Co.,  Mas- 

sam  v.  560,  564,  SB8 

Thornbury  v.  Bevill  71 

Thurber,  Wharton  v.  663 

Till,  Coslake  v.  42 

Toland,  Scoville  v.  97 

Tolle,  In  re  405 

Tonge  v.  Ward  321 

Town  v.  Stetson  306 

Tripp,  Longman  v.  12 
Troxell,  Morgan  Sons  Co.  v.  674 

Truefitt,  Perry  v.  73 

Trust,  Gouraud  v.  •  460 
Tucker  Manufacturing  Co.  v. 

Boyington  474 

Tucker  v.  Turpin  196 

Tudor  v.  Tudor  419 

Turner,  Beard  v.  251 

v.  Evans  114 

v.  Major  202 

Turpin,  Dent  v.  196 

Tucker  v.  196 

Twentsche     Stootn     Bleekery 

Goor  v.  Ellinger  &  Co.  583 

Tynberg,  Messerole  v.  300 


U. 

Uhler,  Glendon  Iron  Co.  v.  439 

Ullmer,  Guinness  v.  89 

United  States  i\  Steffens  658 

Upmann  v.  Elkan  369 


V. 

Van  Nostrand,  Dougherty  v.  64 

Vick,  Edelsten  ».  119 

Vickery  v.  Welch  62 

Vidvard  &  Sheehan,  In  re  469 

Volta  Belt  Co.  In  re  468 

Vowinkle,  Hostetter  v.  366 


W. 

Wade  v.  Jenkins  192 

Wagner,  Lumley  v.  112 
Walkden  Aerated  Waters  Co. 

In  re  558 

Walker,  Allsopp  v.  545 

Cheavin  v.  528 

Collins  Co.  v.  171 


Walker,  Levy  v.  639 

Walker  &  Co.  Ex  parte  624 

Walmsley,  Ains worth  v.  257 

Walton  v.  Crowley  138 

Wamsutta  Mills  v.  Allen  660 

Warburg  &  Co.  In  re  571 

Ward  v.  Beeton  450 

v.  Drat  607 

v.  Robinson  585 

Tonge  v.  321 

Ward  &  Co.,  Spratt's  Patent  v.  644 

Watson,  Cooper  i'.  5 

Marshall?;.  162 

Wattles,  Binninger  v.  240 

Weaver,  In  re  501 

Franks  v.  87 

Webster,  Routh  v.  86 

v.  Webster  7 

Wedderburn  v.  Wedderburn       139 

Wedgwood  v.  Smith  96 

Weed  v.  Peterson  387 

Welch  v.  Knott  157 

Vickery  v.  62 

Weldon  v.  Dicks  638 

Wells,  Fetridge  v.  144 

Westhead,  Cartier  v.  199 

Weston  v.  Hemmons  517 

v.  Ketcham   (1)  455 

(2)  487 

Wharton  v.  Thurber  663 
Wheeler,  Hennessy  v.  483 
Wheeler  and  Wilson  Manufact- 
uring Co.  v.  Shakespear  322 
Whitaker,  Darbey  v.  153 
White,  Comstockv.  180 
Hennessy  v.  650 
Lazenby  v.  (1)  344 
(2)  346 

Whitehead,  Bryson  v.  36 

Whiteley,  In  re  641 

Whittaker  v.  Howe  66 

Whitwell,  Standish  v.  258 

Whyte,  In  re  380 

Wilcox,  Popham  v.  425 

Wilder,  Laird  v.  418 

v.  Wilder  372 

Wilkes,  Dayton  v.  178 

Willett  v.  Blanford  70 

Williams  v.  Adams  662 

v.  Johnson  150 

v.  Osborne  254 

v.  Spence  225 

v.  Williams  (1)  26 

(2)  29 

Williamson,  Richards  v.  441 

Wilson  v.  Maxfield  459 


XIX 


TABLE  OF  CASES. 


Wilson,  Singer  Manufacturing 

Co.  v.  477 

Winchester,  Graveley  v.  272 

Longman  v.  15 

Thomson  v.  59 

Winsor  v.  Clyde  396 

Stetson  v.  396 

Winyard,  Yovatt  v.  31 

Witt  v.  Corcoran  423 

Witthaus  v.  Braun  492 

Wolfe  v.  Barnett  390 

v.  Burke  434 

v.  Goulard  179 

v.  Hart  653 

Wolff,  Lea  v.  407 

Wolmershausen  v.  O'Connor  552 

Wood,    Manhattan     Medicine 

Co.  v.  628 

Metzler  v.  587 

Woodruff,  Smith  v.  276 

Woods  v.  Sands  467 

Woodside,  Alleghany  Fertilizer 

Co  v.  364 

Woodward  v.  Lazar  212 

Woollam  v.  Ratcliff  217 


Worral  v.  Hand  6 

Worrell,  Morse  v.  445 

Worthington  &  Co.  In  re  655 

Wotherspoon  v.  Currie  329 

Wotherspoon  &  Co.  v.  Gray  & 

Co.  227 

Wright,  Blackwell  v.  466 

Heath  v.  133 

Martin  v.  52 

Phalon  v.  232 

Wylam  v.  Clarke  488 


Y. 

Young,  Ex  parte,  In  re  Lemon 

Hart  &  Son  537 

v.  Macrae  205 

Yovatt  v.  Winyard  31 


Z. 

Zeilen  &  Co.,  Ellis  v. 


348 


XX 


TABLE  OF  ABBREVIATIONS. 


A.  J Australian  Jurist. 

Abb.  Pr Abbott's  Practice  Reports  (New  York). 

Act.  Comm Acting  Commissioner. 

Ad.  &  E Adolphus  and  Ellis. 

Alb.  L.  J Albany  (New  York)  Law  Journal. 

Allen Allen  (Massachusetts). 

Am.  L.  Reg American  Law  Register. 

Am.  L.  Rev American  Law  Review. 

Am.  L.  T American  Law  Times. 

Amer.  Rep American  Reports. 

App.  Gas Appeal  Cases. 

Asst.  Comm Assistant  Commissioner. 

Atk.      ...*....  Atkins. 

B.  &  Ad Barnewall  and  Adolphus. 

B.  &  Cr Barnewall  and  Cresswell. 

Barb.  Ch Barbour's  Chancery  Reports  (New  York). 

Barb.  S.  C.  or  Barb.   .     .  Barbour's  Supreme  Court  Reports  (New  York). 

Beav Beavan. 

Beng.  L.  R.  App.  .     .     .  Bengal  Law  Reports,  Appendix. 

Biss Bissell  (U.  S.  Circuit  Court). 

Bl.  C.  C Blatchford  (U.  S.  Circuit  Court). 

Bos Bosworth  (New  York). 

Bos.  &  P.  N.  S Bosanquet  and  Puller  New  Reports. 

Brews Brewster  (Pennsylvania). 

Browne Browne  (Massachusetts). 

Bush Bush  (Kentucky). 

C.  B Common  Bench. 

C.  C.  C Central  Criminal  Court. 

C.  C.  C.  Sess.  Pap.     .     .  Central  Criminal  Court  Sessions  Papers. 

C.  C.  R Court  of  Crown  Cases  Reserved. 

C.  &  P Carrington  and  Payne. 

C.  P Common  Pleas. 

xxi 


TABLE  OF  ABBREVIATIONS. 

C.  P.  Div Common  Pleas  Division. 

Cal California. 

Ch.  D Chancery  Division. 

Chicago  L.  N Chicago  Legal  News. 

Chitty  Gen.  Pr.      .     .     .  Chitty's  General  Practice. 

Cine Cincinnati. 

Codd.  Dig Coddington's  American  Digest  of  Trade-Mark 

Cases. 

Comm Commissioner. 

Comm.  of  App.      .     .     .  Commission  of  Appeals  (New  York). 

Conn Connecticut. 

Coop Cooper. 

C.  P.  Coop C.  P.  Cooper. 

Cor Cory  ton  (Bengal). 

Cox Cox's  Criminal  Cases. 

Pi.  Cox R.  Cox's  American  Trade-Mark  Cases. 

Cro Croke. 

Ct.  of  App Court  of  Appeal. 

Ct.  of  Sess.  Cas.   .     .    .  Court  of  Sessions  Cases  (Scotch). 

Cush Gushing  (Massachusetts). 

D.  &  B Dearsley  and  Bell. 

D.  &  R Dowling  and  Rylands. 

Daly Daly  (New  York). 

Deady Deady  (U.  S.  Circuit  Court). 

De  G.,  F.  &  J De  Gex,  Fisher  and  Jones. 

De  G.  &  J De  Gex  and  Jones. 

De  G.,  J.  &  S De  Gex,  Jones  and  Smith. 

De  G.,  M.  &  G De  Gex,  Macnaghten  and  Gordon. 

DeG.  &  Sm De  Gex  and-Smale. 

Dill Dillon  (U.  S.  Circuit  Court). 

Doug Douglas. 

Drew Drewry. 

Drew.  &  Sm Drewry  and  Smale. 

Duer Duer  (New  York). 

E.  &  B Ellis  and  Blackburn. 

Ell.  &  Ell Ellis  and  Ellis. 

Eq.  Rep Equity  Reports. 

Esp.  N.  P.  C Espinasse,  Nisi  Prius  Cases. 

Ex Exchequer. 

Ga Georgia. 

Giff. Giffard. 

H.  L.  C House  of  Lords  Cases. 

H.  of  L House  of  Lords. 

xxii 


TABLE  OF  ABBREVIATIONS. 

H.  &  M Hemming  and  Miller. 

H.  &  N Hurlstone  and  Norman. 

H.  &  Tw 'Hall  and  Twells. 

H.  &  W Harrison  and  Wollaston. 

Hand Hand  (New  York). 

Hilt Hilton  (New  York). 

Hoff Hoffman  (New  York). 

Holmes Holmes  (U.  S.  Circuit  Court). 

Hopk Hopkins  (New  York). 

How.  App.  Cas.     .     .     .  Howard's  Appeal  Cases  (New  York). 

How.  Pr Howard's  Practice  Cases  (New  York). 

Hughes Hughes  (U.  S.  Circuit  Court). 

Hun Hun  (New  York). 

Ill Illinois. 

Ind Indiana. 

Ir.  Ch Irish  Chancery. 

Ir.  Eq Irish  Equity. 

Ir.  Jur Irish  Jurist. 

J.  &  H Johnson  and  Hemming. 

J.  &  S Jones  and  Spencer  (New  York). 

Jac ,     .  Jacob. 

Jac.  &  W Jacob  and  Walker. 

Johns Johnson. 

Journ.  of  Jurisp.    .     .     .  Journal  of  Jurisprudence  (Scotch). 

Jur Jurist. 

K.  &  J Kay  and  Johnson. 

Keyes Keyes  (New  York). 

Ky Kentucky. 

L.  J.  Bkptcy Law  Journal,  Bankruptcy. 

L.  J.  Ch Law  Journal,  Chancery. 

L.  J.  C.  P Law  Journal,  Common  Pleas. 

L.  J.  Ex Law  Journal.  Exchequer. 

L.  J.  K.  B Law  Journal,  King's  Bench. 

L.  J.  M.  C Law  Journal,  Magistrates'  Cases. 

L.  J.  Notes  of  Cases.       .  Law  Journal,  Notes  of  Cases. 

L.  J.  P.  C Law*  Journal,  Privy  Council. 

L.  J.  Q.  B Law  Journal,  Queen's  Bench. 

L.  R.  Ch Law  Reports,  Chancery  Appeals. 

L.  R.  C.  P Law  Reports,  Common  Pleas. 

L.  R.  Eq Law  Reports,  Equity. 

L.  R.  H.  L Law  Reports,  House  of  Lords   (English  and 

Irish). 

L.  R.  P.  C Law  Reports,  Privy  Council. 

xxiii 


TABLE  OP  ABBREVIATIONS. 

L.  T Law  Times. 

La.  Ann Louisiana  Annual  Reports. 

Lans Lansing  (New  York). 

Lathrop Lathrop  (Massachusetts). 

Leg.  Obs Legal  Observer. 

M.  M.  A Merchandise  Marks  Act,  1862. 

M.  &  Rob Moody  and  Robinson. 

Mac.  &  G Macnaghten  and  Gordon. 

Madd Maddock. 

Man.  &  G Manning  and  Granger. 

Mass Massachusetts. 

McLean McL  an  (U.  S.  Circuit  Court). 

Md Maryland. 

Me Maine. 

Mer Merivale. 

Mich.  C.  C Michigan  Circuit  Court. 

Mich.  N.  P Michigan  Nisi  Prius. 

Mo Missouri. 

Mod Modern  Reports. 

Mont.,  D.  &  De  G.  .     .     .  Montague,  Deacon  and  De  Gex. 

Monthly  L.  R Monthly  Law  Reports. 

Moo.  P.  C Moore's  Privy  Council  Cases. 

My.  &  Cr Mylne  and  Craig. 

N.  Car North  Carolina. 

N.  P Nisi  Prius. 

N.  R New  Reports. 

N.  S New  Series. 

N.  Y New  York. 

N.  &  M Neville  and  Manning. 

N.  &  P Neville  and  Perry. 

Neb Nebraska. 

Paige Paige  (New  York). 

Pemb Pemberton  on  Judgments. 

Penn.  L.  J Pennsylvania  Law  Journal. 

Penn.  St Pennsylvania  State  Reports. 

Ph Phillips. 

Phila Philadelphia. 

Pick Pickering  (Massachusetts) 

Post Post  (Missouri). 

R.  I Rhode  Island. 

Rep Reporter  (Boston). 

Robertson Robertson  (New  York). 

Russ Russell. 

xxiv 


TABLE  OF  ABBREVIATIONS. 

S.  &  S Simons  and  Stuart. 

Sandf.  Ch Sandford's  Chancery  Reports  (New  York). 

Sandf.  S.  C Sandford's    Supreme    Court    Reports    (New 

York). 

Sawyer Sawyer  (U.  S.  Circuit  Court). 

Scot.  L.  Rep Scottish  Law  Reporter. 

Scott  N.  R Scott's  New  Reports. 

Seton Seton  on  Decrees. 

Sickles Sickles  (New  York). 

Sim Simons. 

E.  D.  Smith E.  D.  Smith  (New  York). 

Story Story  (U.  S.  Circuit  Court). 

Sup.  Ct Supreme  Court. 

Super.  Ct Superior  Ct. 

Swanst Swanston. 

T.  M.  A Trade-Marks  Registration  Act. 

Thomp.  &  C Thompson  and  Cook  (New  York). 

Trade-Marks British  and    Foreign   Journal  of   Commerce, 

Trade-Marks,  and  International  Exhibitions. 

Trans.  App Transcript  Appeals  (New  York). 

U.  S Otto,  U.  S.  S.  C.  Reports. 

U.  S.  C.  C.,  Dt.  of —  .     .     United  States  Circuit  Court,  District  of — . 

U.  S.  Pat.  Comm.  Decis.     Decisions  of  the  U.  S.  Commissioner  of  Pat- 
ents. 

U.  S.  Pat.  Gaz United  States  Official  Patent  Gazette. 

U.  S.  Rep United  States  Supreme  Court  Reports. 

U.  S.  Sup.  Ct United  States  Supreme  Court. 

V.  &  B Vesey  and  Beames. 

V.  R.  Eq Victoria  Reports  (First  Series)  Equity. 

Va Virginia. 

Ves Vesey. 

Viet.  L.  R.  Eq.       .     .     .     Victoria  Law  Reports  (New  Series)  Equity. 

W.  N Weekly  Notes. 

P.  W.  N Phila.  Weekly  Notes  of  Cases. 

W.  R Weekly  Reporter. 

W.  Va West  Virginia. 

W.  &  W.  (I.,  E.  &  M.)    .     Wyatt  and  Webb's  Victoria  Reports  (Insol- 
vency, Ecclesiastical  and  Matrimonial). 

W.,  W.  &  A'B.  Eq.     .     .     Wyatt,  Webb  and  A'Beckett's  Victoria  Re- 
ports (Equity). 

W.,  A'B.  &  W.  Eq.     .     .     Webb,  A'Beckett  and  Williams  Victoria  Re- 
ports (Equity). 

Wallace Wallace  (United  States  Supreme  Court). 

XXV 


TABLE  OF  ABBREVIATIONS. 

Wall.  Jr Wallace,  Junior  (U.  S.  Circuit  Court). 

West.  L.  J Western  Law  Journal. 

Wils Wilson. 

Wilson  (Ind.)     ....  Wilson's  Indianapolis  Reports. 

Wis Wisconsin. 

Wood.  &  M Wood  bury  and  Minot  (U.  S.  Circuit  Court). 

Y.  &  C.  Ch Younge  and  Collyer's  Chancery  Reports. 

xxvi 


TRADE-MARK  CASES. 


1.  Southern  v.  How. 

Temp.  Jac.  1.     Common  Pleas.  —  Popham,  144;  Cro.  Jac.  471;  2  Rolle, 
28;  R.  Cox,  633. 

ACTION"  on  the  case  for  deceit. 

Doderidge,  J.,  cited  a  case  in  which  it  was  held  by  the 
Court  of  Common  Pleas,  in  the  reign  of  Queen  Elizabeth, 
that  an  action  on  the  case  for  deceit  would  lie  against  a  cloth- 
ier who  had  applied  another's  mark  to  his  own  inferior  cloth. 
Popham  says  the  action  was  brought  by  the  defrauded  cloth- 
ier ;  Croke,  by  the  purchaser ;  but  Rolle  states  that  this  was 
not  mentioned,  but  conjectures  that  it  was  by  the  purchaser. 

2.  Blanchard  v.  Hill. 
December  18,  1742.     Lord  Hardwicke,  C.  —  2  Alk.  484  ;  R.  Cox,  633. 

MOTION  for  injunction,  to  restrain  the  use  of  the  Great 
Mogul  stamp  on  cards,  refused. 

"  Every  particular  trader  has  some  particular  mark  or  stamp ;  but 
I  do  not  know  of  any  instance  of  granting  an  injunction  here  to  re- 
strain one  trader  from  using  the  same  mark  with  another,  and  I 
think  it  would  be  of  mischievous  consequence  to  do  it.  Mr.  Attor- 
ney General  has  mentioned  a  case  where  an  action  at  law  was 
brought  by  a  clothworker  against  another  of  the  same  trade  for  using 
the  same  mark,  and  a  judgment  was  given  that  the  action  would  lie. 
But  it  was  not  the  single  act  of  making  use  of  the  mark  that  was 
sufficient  to  maintain  the  action,  but  doing  it  with  a  fraudulent  de- 
sign, to  put  off  bad  clothes  by  this  means,  or  to  draw  away  custom- 
ers from  the  other  clothier ;  and  there  is  no  difference  between  a 
1  1 


SINGLETON   V.   BOLTON. 

tradesman's  putting  up  the  same  sign,  and  making  use  of  the  same 
mark,  with  another  of  the  same  trade."  "  An  objection  has  been 
made  that  the  defendant,  in  using  this  mark,  prejudices  the  plaintiff 
by  taking  away  his  customers.  But  there  is  no  more  weight  in  this 
than  there  would  be  in  an  objection  to  one  innkeeper  setting  up  the 
same  sign  with  another." 1 

3.    Gibblett  v.  Read. 
17  Geo.  2.     Lord  Hardwicke,  C.  —  9  Mod.  459. 

SUIT  by  the  children  of  the  proprietor  of  nineteen  'out  of 
twenty  shares  in  the  St.  James'  Evening  Post  newspaper. 

Held,  that  such  shares  belonged  to  the  personal  estate  of 
the  deceased  proprietor,  and  must  be  accounted  for  by  his 
widow  and  executrix  accordingly. 

"  The  case  was  put  of  physical  secrets  or  nostrums,  where  every- 
thing was  carried  on  by  the  materials  purchased  after  the  testator's 
death,  and  yet  the  nostrum  is  part  of  the  personal  estate  of  thev  tes- 
tator. This  has  been  resembled  to  the  case  of  a  shoemaker ;  and,  in 
that  case,  suppose  the  dealing  has  been  extensive,  and  carried  on  in 
partnership,  and  with  the  father's  stock,  the  son,  who  is  executor, 
would  be  accountable.  Suppose  the  house  were  a  house  of  great 
trade,  he  must  account  for  the  value  of  what  is  called  the  good-will  of 
it."  "  In  the  case  of  Tipping,  if  anybody  had  thought  of  his  nostrum, 
as  he  had  no  patent,  any  discoverer  might  have  sold  it." 


4.    Singleton  v.  Bolton. 
1783.     King's  Bench.  —  3  Doug.  293  ;  R.  Cox,  634. 

THE  plaintiff  manufacturing  and  selling,  in  succession  to 
his  father,  a  medical  preparation  under  the  name  of  "  Dr. 
Johnson's  Yellow  Ointment"  and  the  defendant  having  begun 
to  sell  a  medicine  under  the  same  name,  plaintiff  nonsuited  in 
an  action,  and  a  rule  which  had  been  obtained  for  a  new 
trial  discharged. 

1  In  Amoskeag  Man.  Co.  v.  Spear,  an  injunction  in  a  case  in  which,  at 
100,  commenting  upon  this  case  Judge  the  present  day,  one  would  certainly 
Duer  said  :  "  Lord  Hardwicke  refused  be  granted." 

2 


WORRAL  V.  HAND. 

Per  Lord  Mansfield,  C.  J.  "  If  the  defendant  had  sold  a  medicine 
of  his  own  under  the  plaintiff's  name  or  mark,  that  would  be  a  fraud 
for  which  an  action  would  lie.  But  here  both  the  plaintiff  and  de- 
fendant use  the  name  of  the  original  inventor,  and  no  evidence  was 
given  of  the  defendant  having  sold  it  as  if  prepared  by  the  plaintiff. 
The  only  other  ground  on  which  the  action  could  be  maintained  was 
that  of  property  in  the  plaintiff,  which  was  not  pretended,  there  being 
no  patent,  nor  any  letters  of  administration." 


5.  Cooper  v.  Watson. 
1 784.    -King's  Bench.  —  3  Doug.  4. 1 3. 

ACTION  of  covenant  on  articles  of  partnership  in  a  brewing 
business,  by  which  it  was  covenanted  that  the  partnership 
should  continue  for  eleven  years,  with  a  proviso  that  either 
partner  should  be  at  liberty  to  quit  the  trade  and  mystery  of 
a  brewer,  on  giving  six  months'  notice  to  the  other,  and  that 
the  party  to  whom  such  notice  should  be  given  might  be  at 
liberty  to  continue  the  trade  on  his  own  account. 

The  defendant  continuing  to  trade  as  a  brewer  on  his  own 
account,  after  giving  the  six  months'  notice : 

Held,  that  on  the  construction  of  the  covenant  the  defend- 
ant must  quit  the  business  altogether. 

6.  Worral  v.  Hand. 

1 791.     Lord  Kenyan,  C.  /.,  at  N.  P.  —  Peake,  105. 

ACTION  of  assumpsit  for  goods  sold  and  delivered,  the  de- 
fendant being  the  administratrix  of  a  publican,  and  having 
sold  the  good-will  of  the  public-house  for  a  sum  of  money : 

Held,  that  the  sum  which  she  had  received  was  assets  in 
her  hands,  though  she  was  tenant  at  will  after  the  death  of 

the  intestate. 

3 


HAMMOND  V.  DOUGLAS. 

7.  Webster  v.  Webster. 
May  19,  1791.     Lord  Thurlow,  C.  —  3  Swanst.  490. 

MOTION  by  one  of  three  executors  of  a  deceased  person  for 
an  injunction  to  restrain  the  other  two  executors,  whose  part- 
ner the  deceased  had  been,  from  continuing  to  use  the  name 
of  their  deceased  partner  in  their  business,  refused,  on  the 
ground  that  no  liability  could  thereby  be  thrown  upon  the 
deceased  partner's  estate,  and  that  the  possible  fraud  upon 
the  public  gave  the  executor  no  claim  against  the  defendants. 


8.  Jendwine  v.  Slade. 
July  12,  1797.     Lord  Kenyan,  C.  J.,  at  N.P.—  2  Esp.  N.  P.  C.  572. 

ACTION  to  recover  damages  on  the  sale  of  two  pictures, 
copied  respectively  from  Claude  Lorraine  and  Teniers,  but 
sold  under  a  catalogue  which  described  them  as  by  those 
artists. 

Held,  that  the  description  did  not  amount  to  a  warranty. 

"It  was  impossible  to  make  this  the  case  of  a  warranty.  The 
pictures  were  the  work  of  artists  some  centuries  back,  and  there 
being  no  way  of  tracing  the  picture  itself,  it  could  only  be  matter  of 
opinion  whether  the  picture  in  question  was  the  work  of  the  artist 
whose  name  it  bore,  or  not.  The  catalogue  only  expressed  the  opin- 
ion of  the  vendor,  but  left  the  determination  to  the  buyer's  own  judg- 
ment." 1 

9.  Hammond  v.  Douglas. 
July  31,  1800.    Lord  Loughborough,  C.  —  5  Ves.  539. 

ON  exceptions  to  the  master's  report,  which  stated  the 
purchase  money  of  the  good-will  of  a  partnership  business  to 
belong  to  the  joint  estate  of  the  partners,  one  of  whom  was 
dead : 

Held,  that  the  sum  belonged  to  the  survivor. 

1  See  Power  v.  Burham,  56 ;  Lord  Byron  v.  Johnston,  23. 

4 


HOGG  v.  KIRBY. 

The  Lord  Chancellor  was  "  clearly  of  opinion  that  upon  a  partner- 
ship without  articles  the  good-will  survives  ;  and  a  sale  of  it  cannot 
be  compelled  by  the  representative  of  the  deceased  partner,  being  the 
right  of  the  survivor,  which  the  law  gives  him,  to  carry  on  the  trade : 
it  is  not  partnership  stock  of  which  the  executor  may  compel  a 
division." 


1O.    Hogg  v.  Kirby. 
March  15,  1803.     Lord  Eldon,  C.  —  8  Ves.  215. 

THE  plaintiff  being  the  proprietor  of  a  magazine  called 
"  The  Wonderful  Magazine"  the  defendant  began  to  bring 
out  an  extremely  similar  publication,  which  he  described  as  a 
"  New  Series,  Improved.'1 

Injunction  granted  to  restrain  the  wrongful  acts  of  the  de- 
fendant ;  and  Held,  that  the  fact  that  the  plaintiff's  work  was 
incorrectly  stated  to  be  "  by  William  Granger,  Esq.,"  did  not 
disentitle  the  plaintiff  to  his  injunction,  but  should  be  left  to 
form  an  ingredient  in  the  action  for  damages. 

It  is  competent  to  any  person,  perceiving  the  success  of  a  literary 
work,  "  to  set  about  a  similar  work,  bond  fide  his  own.  But  it  must 
be  in  substance  a  new  and  original  work,  and  must  be  handed  out  to 
the  world  as  such."  "  I  shall  state  the  question  to  be,  not  whether 
this  work  is  the  same,  but,  in  a  question  between  these  parties, 
whether  the  defendant  has  not  represented  it  to  be  the  same ;  and 
whether  the  injury  to  the  plaintiff  is  not  as  great,  and  the  loss  ac- 
cruing ought  not  to  be  regarded  in  equity  upon  the  same  principles 
between  them  as  if  it  was,  in  fact,  the  same  work." l 

1  In  Edmonds  v.  Benlon,  33,  the  name  Dear  Minnie."    In  Prowett  v.  Mortimer, 

"  The  Old  Real  John  Bull "  was  held  141,  "  The  Britannia  "  newspaper  was 

to  be  an  infringement  of  "  The  Real  combined  with  "John  Bull,"  under  the 

John  Bull."      "  The  Edinburgh   Philo-  name  of    "  The  John   Bull  and  Brit- 

sophical  Journal,  conducted  by  Dr.  Brews-  annia;"  the  former  publisher  of  "  The 

ter  and  Prof.  Jameson,"  was  held  to  be  Britannia  "  was  restrained  from  print- 

'  infringed  by  "  No.  1  of  a  New  Series  of  ing  "  The  True  Britannia  "  as  a  contin- 

the  Edinburgh  Philosophical  Journal,  con-  nation  of  "  The  Britannia."    In  Clement 

ducted  by  Dr.  Brewster."    In  Chappell  v.  Maddick,  174,  plaintiff's  newspaper 

T.  Davidson,  136,  the  name  "  Minnie  "  was  called  "  Bell's  Life  in  London ; "  an 

was  used  by  plaintiffs;  an  injunction  injunction  was  granted  to  restrain  the 

was  granted  to  restrain  defendants  from  use  of  the  name  "  The  Penny  Bell's 

using   "  Minnie  Dale,"   and  "  Minnie,  Life  and  Sporting  News."    In  Ingram 


BUNN  V.  GUY. 


11.    Bunn  v.  Guy. 
November  7,  1803.     King's  Bench.  —  !  East,  190. 

CASE  sent  from  Chancery.  Held,  that  a  contract  entered 
into  by  a  practising  attorney  to  relinquish  his  business  and 
recommend  his  clients  to  two  other  attorneys  for  a  valuable 
consideration,  and  that  he  would  not  himself  practise  in  such 
business  within  certain  limits,  and  would  permit  them  to  use 
his  name  in  their  firm  for  a  certain  time,  but  without  his  in- 
terference, etc.,  was  good  in  law. 


v.  Stiff,  175,  the  name  "  The  London 
Journal "  was  held  to  be  invaded  by 
"  The  New  London  Journal."  "  The 
United  States  Police  Gazette  "  was 
treated  as  a  fraudulent  imitation  of 
"  The  National  Police  Gazette,"  the 
two  papers  being  of  the  same  general 
appearance,  in  Matsell  v.  Flanagan, 
270.  "  The  Bedfordshire  Express  and 
General  Advertiser  for  the  County,"  and 
"  The  Bedfordshire  Express  and  Gen- 
eral Advertiser  for  the  Counties  of  Cam- 
bridge, Hertfordshire,  Huntingdonshire, 
and  Middlesex,"  were  held  to  conflict, 
the  words  "  The  Bedfordshire  Express  " 
being  in  similar  type.  In  Clowes  v. 
Hogg,  345,  "  London  Society "  and 
"  English  Society "  were  held  to  con- 
flict, the  two  publications  being  much 
the  same  in  appearance.  In  Mack  v. 
Fetter,  403,  plaintiff's  book  was  called 
"  The  Birthday  Scripture  Text  Book ;  " 
it  was  held  to  be  infringed  by  "  The 
Children's  Birthday  Text  Book."  "  The 
Iron  Trade  Circular  (Rylands'),"  and 
"  The  Iron  Trade  Circular  (Edited  by 
Samuel  Griffiths),"  were  held  to  conflict 
in  Corns  \.  Griffiths,  420.  In  Metzler 
v.  Wood,  587,  the  plaintiff's  book  was 
called  "Henry's  Royal  Modern  Tutor 
for  the  Pianoforte,"  and  was  protected 
as  against  "  Henry's  New  and  Revised 


Edition  of  Jousse's  Royal  Standard 
Pianoforte."  In  Snowden  v.  Noah,  41, 
plaintiff's  paper  was  called  "  The  Na- 
tional Advocate,"  and  defendant's  "  The 
New  York  National  Advocate  ;  "  the  pa- 
pers not  being  of  the  same  size  and 
appearance,  an  injunction  was  refused. 
In  Bell  v.  Locke,  65,  the  names  were 
"  The  Democratic  Republican  New  Era," 
and  "  The  New  Era;"  in  Stephens  v. 
De  Conto,  295,  "  La  Cronica  "  and  "  El 
Cronista ;"  in  both  cases  the  papers 
did  not  look  alike,  and  the  prayer  for 
relief  was  denied.  In  Bradbury  v.  Bee- 
ton,  320,  "  Punch,"  and  "  Punch  and 
Judy  ;  "  in  Tallcot  v.  Moore,  478,  "  The 
Little  Red  Book,  New  Series,  \  876,"  and 
"  The  Red  and  White  Book ; "  in  The 
American  Grocer  Publishing  Association 
v.  Grocer  Publishing  Company,  503, 
"  The  American  Grocer,"  and  "  The 
Grocer,"  in  all  of  which  instances  the 
court  refused  to  interfere. 

It  is  scarcely  possible  to  reconcile  the 
decisions  upon  this  branch  of  the  law 
of  trade-marks,  except  by  recognizing 
that  the  American  cases,  and  probably 
the  English,  proceed  upon  the  assump- 
tion that,  as  a  general  rule,  the  appear- 
ance of  the  papers  is  a  controlling  con- 
sideration. 

See  Jollie  v.  Jaques,  105. 


SHACKLE  V.  BAKER. 

12.    Longman  v.  Tripp. 
November  21,  1805.     Common  Pleas.  —  2  Bos.  §•  P.  N.  R.  67. 

ACTION  of  assumpsit.  Held,  that  the  right  of  printing  and 
publishing  the  Bristol  Mercury  newspaper  passed,  on  the 
bankruptcy  of  the  printer  and  publisher,  to  his  assignees  in 
bankruptcy,  as  being  goods  and  chattels  within  21  Jac.  I. 
c.  19,  s.  11,  notwithstanding  an  assignment  thereof  as  a  se- 
curity previously  made  to  a  creditor,  but  not  made  public. 

13.    Shackle  v.  Baker. 
February  6,  1808.     Lord  Eldon,  C.  —  14  Ves.  468. 

MOTIOX  for  an  injunction  to  restrain  the  defendants  from 
proceeding  at  law  under  a  judgment,  the  plaintiff  alleging 
that  the  defendants,  the  good-will  of  whose  business  he  had 
bought,  were  carrying  on  business  in  competition  with  him, 
after  they  had  persuaded  him  to  omit  a  covenant  against  so 
doing  in  the  agreement  for  sale,  on  the  ground  that  it  was 
unnecessary  for  him  to  have  more  than  their  word,  refused. 

"  I  cannot  see  my  way  to  grant  an  injunction  in  this  case.  If  it 
had  been  nothing  more  than  a  purchase  of  the  good-will  of  this  trade, 
the  vendor  would  be  at  liberty  to  set  up  the  same  trade  in  any  other 
situation.  Against  that  the  purchaser  has  the  choice  of  several  se- 
curities. He  may  rest  upon  the  assurance  of  the  vendor  ;  he  may 
require  a  covenant ;  but  resting  upon  a  covenant,  he  can  have  noth- 
ing more  than  an  action  for  damages,  and  the  observation  that  such 
an  action  is  an  extremely  imperfect  remedy  has  been  repeatedly 
made.  The  parties  may,  therefore,  proceed  to  ascertain  for  them- 
selves what  shall  be  the  damages  from  time  to  time,  and,  unless  they 
are  so  awkward  as  to  put  that  in  the  shape  of  penalty  instead  of 
liquidated  damages,  there  is  a  perfect  and  absolute  remedy." 

7 


FEATHERSTONHAUGH  V.  FENWICK. 

14.  Crawshay  v.  Collins. 
July  26,  1808.     Lord  Eldon,  C.  — 15  Ves.  218. 

PARTNERSHIP  suit. 

P.  27.  The  Lord  Chancellor  agreed  with  the  doubt  ex- 
pressed by  Sir  Samuel  Roniilly  upon  the  decision  in  Ham- 
mond v.  Douglas,  5  Ves.  539,  that  the  good-will  of  a  partner- 
ship business  survived  to  the  surviving  partner. 


15.  Longman  v.  Winchester. 
November  23,  1809.     Lord  Eldon,  C.  —  16  Ves.  269. 

MOTION  to  dissolve  an  injunction  which  had  been  granted 
to  restrain  the  pirating  of  a  court  calendar  refused. 

"  In  the  case  of  Hogg  v.  Kirby  there  was  no  doubt  that  any  person 
might  publish  a  work  of  that  description  which  was  the  subject  of 
that  injunction.  Each  party  might  publish  his  own  collection,  and 
the  articles  might  happen  to  be  the  same,  but  the  one  could  not  ex- 
cite the  public  curiosity  by  copying  into  his  work  from  that  of  the 
other.  The  defendant  in  that  case  had  not  done  that ;  but  he  pub- 
lished a  number  of  a  work  as  a  continuation  of  the  plaintiff's  old 
work,  taking  the  credit  which  had  been  acquired  by  that  to  his  own, 
and  that  he  was  not  permitted  to  do." 


16.  Featherstonhaugh  v.  Fenwick. 
April  18,  1810.  Grant,  M.  R.  —  17  Ves.  298. 
PARTNERSHIP  suit.  Held,  that  the  consequence  of  the  dis- 
solution of  a  partnership,  where  there  were  no  articles  pre- 
scribing the  terms,  was  a  general  sale  and  account  of  the  joint 
property ;  and  that  some  of  the  partners  could  not,  therefore, 
insist  on  taking  the  share  of  another  partner  at  a  valuation, 
nor  that  he  should  remove  his  property  from  the  premises,  so 
as  to  deprive  him  of  his  share  in  the  good-will,  nor  retain  the 
benefit  of  a  clandestine  renewal  to  them  of  the  lease  of  the 
partnership  premises,  since  that  would  be  to  give  them  the 
whole  benefit  of  the  good-will,  but  that  such  renewed  lease 
must  be  included  in  the  valuation  of  the  partnership  property. 

8 


SEDON  V.  SENATE. 

17.  Cruttwell  v.  Lye. 

November  21,  1810.     Lord  Eldon,  C.  —  17  Ves.  335  ;  1  Rose,  123. 

THE  plaintiff  having  bought  from  the  defendant's  assignees 
in  bankruptcy  the  good-will  of  his  principal  carrying  business, 
and  a  subordinate  business  of  the  same  kind  having  been 
bought  back  for  the  defendant  at  the  same  time,  the  latter 
recommenced  business  in  such  a  manner  as  to  render  a  mis- 
take between  the  two  businesses  possible. 

Motion  for  an  injunction  to  restrain  the  defendant  from  so 
doing  refused,  on  the  ground  that  the  defendant  was  enti- 
tled to  carry  on  a  similar  business,  if  he  did  not  hold  it  out  as 
being  the  same. 

"  There  can  be  no  doubt  that  this  court  would  interpose  against 
that  sort  of  fraud  which  has  been  attempted  by  setting  up  the  same 
trade  in  the  same  place,  under  the  same  sign  or  name,  the  party  giv- 
ing himself  out  as  the  same  person." 

"  I  cannot  say  that  any  of  those  interests  which  a  bankrupt  is  sup- 
posed to  have  by  the  effect  of  the  certificate,  or  in  the  surplus  of  his 
estate  after  payment  of  his  debts,  form  a  principal  upon  which  he 
should  not  be  permitted  to  engage  again  in  the  like  trade,  which  in 
this  sort  of  case  is  materially  distinguished  from  the  same  trade.  In 
Hogg  v.  Kirby,  the  defendant's  magazine,  being  published  as  a  con- 
tinuation of  the  plaintiff's,  was  the  same." 

"  The  good-will,  which  has  been  the  subject  of  sale,  is  nothing  more 
than  the  probability  that  the  old  customers  will  resort  to  the  old 
place." 

18.  Sedon  v.  Senate. 

1811.     Grant,  M.  R.  —  Cited  2  V.  if  B.  220. 

THE  defendant,  having  sold  a  medicine  to  the  plaintiff,  be- 
gan to  sell  another  under  a  similar  description,  and  to  put 
forth  advertisements  containing  verses  which  had  before  been 
used  on  the  original  medicine. 

Injunction  granted  to  restrain  the  defendant  from  continu- 
ing so  to  do,  though  the  plaintiff  had  no  patent  for  the  medi- 
cine. 

9 


DAY  V.  DAY. 

19.  Canham  v.  Jones. 
June  23,  1813.     Plumer,  V.  C.  ofE.  —  2  V.  §•  B.  218. 

THE  plaintiff  being  the  proprietor  of  a  secret  medicine 
called  "  Velno's  Vegetable  Syrup"  the  defendant,  who  had 
been  in  the  plaintiff's  service,  and  had  there  become  ac- 
quainted with  a  part  of  the  secret,  began  to  make  and  sell  a 
spurious  preparation  under  the  same  name. 

Demurrer  to  a  bill  for  an  injunction  to  restrain  him  from 
so  doing  allowed,  on  the  ground  that  there  was  no  exclusive 
right  in  a  medicine,  not  protected  by  patent,  such  as  to  pre- 
vent the  sale  of  a  medicine  under  the  same  title  by  another 
person,  the  latter  not  assuming  the  name  and  character  of  the 
original  maker.1 

2O.   Scott  v.  Mackintosh. 
May  8,  1813.     Lord  Eldon,  C.  —  l  V.  §•  B.  503. 

MOTION  to  revive  an  injunction  to  restrain  the  defendant 
from  proceeding  at  law  refused. 

"  Where  a  man  sells  the  good-will  of  a  trade  and  covenants  to  make 
it  as  profitable  as  he  can,  the  actual  profit  made  is  not  that  which  the 
vendee  is  bound  to  take ;  but  he  will  have  an  action  of  covenant,  if 
he  can  establish  his  title  to  more  through  the  default  of  the  vendor." 

21.  Day  v.  Day. 

1816.     Chancery.  —  Eden  on  Inf.  (ed.  of  1821)  314. 

THE  defendant  having  placed  on  his  blacking  certain  labels 
in  imitation  of  those  used  by  the  plaintiff  on  his,  injunction 
granted  to  restrain  the  infringement. 

1  See  Burnett  v.  Phalon,  277. 

10 


LORD  BYRON  v.  JOHNSTON. 

22.  Bozon  v.  Farlow. 
July  29,  1816.     Grant,  M.  R.—  l  Mer.  459. 

BILL  by  the  vendor,  for  the  specific  performance  of  an 
agreement  for  the  sale  of  an  attorney's  practice,  dismissed,  on 
the  ground  that  the  agreement  contained  no  express  stipula- 
tions enabling  the  court  to  carry  it  into  effect  on  the  vendor's 
part,  in  return  for  the  purchase  money,  and  that  there  were 
no  conditions  so  generally  applicable  to  such  transactions  as 
to  be  capable  of  being  inserted  by  way  of  "  usual  clauses." 
And  Held,  that  it  was  doubtful  whether  such  an  agreement 
was  in  its  nature  valid,  either  on  the  ground  of  morality  or  of 
public  policy  ;  and  further,  whether,  if  legally  valid,  it  was  of 
such  a  nature  as  to  be  capable  of  being  enforced  in  equity. 

23.  Lord  Byron  v.  Johnston. 
November  28,  1816.     Lord  Eldon,  C.  —  2  Mer,  29. 

THE  defendant  having  advertised  for  sale  certain  poems  of 
which  he  represented  the  plaintiff  to  be  the  author,  on  motion 
on  behalf  of  the  plaintiff  (he  being  absent  abroad),  and  upon 
affidavits  by  his  agents  of  circumstances  leading  to  the  belief 
that  the  poems  were  not  his  work,  and  the  defendant  refusing 
to  swear  to  his  belief  that  they  were  so,  injunction  granted 
to  restrain  the  defendant,  until  answer  or  further  order,  from 
publishing  such  poems  in  the  plaintiff's  name,  or  as  his  work.1 

1  In  Archbold  v.  Sweet,  49,  damages  In  Clemens  v.  Such,  429,  a  false  use 

were  recovered  against  defendant  for  of  the  nom  de  plume  "Mark  Twain" 

issuing  an  inaccurate  edition  of  a  book  was  enjoined. 

falsely  purporting   to   have   been  pre-  On  the  contrary,  in  Martin  v.  Wright, 

pared  by  plaintiff.  52,  the  court  refused  to  restrain  a  false 

In  Seeley  v.  Fisher,  67,  it  was  ruled  use  of  the  name  of  a  painter;  but  upon 

that  au  action  would  lie  for  an  untrue  the  same  facts  it  is  probable  that  the 

statement  that  a  book  was  not  the  work  same  tribunal  would  not  now  decline 

of  the  author  "  while  still  vigorous."  to  grant  an  injunction.     In  Regina  v. 

In  Prince  Albert  v.  Strange,  98,  de-  Closs,  155,  it  was,  in  effect,  decided  that 

fendant  was  restrained  from  exhibiting  the  name  of  a  painter  applied  to  his 

certain  etchings  and  publishing  a  cata-  picture  is  a  trade-mark, 

logue  of  them,  the  etchings  having  been  See  Hogg  v.  Kirby,  10. 
surreptitiously  obtained. 

11 


HARRISON  V.  GARDNER. 

24.  Newbery  v.  James. 
March  27,  1817.     Lord  Eldon,  C.  —  2  Her.  446. 

ON  motion  by  the  defendants,  injunction  which  had  been 
granted  to  restrain  them  from  violating  an  agreement  not  to 
divulge  the  secret  of  a  medical  preparation  dissolved,  on  the 
ground  that  if  there  were  a  real  secret  in  question,  the  court 
would  have  no  means  of  interfering  to  enforce  its  order. 


25.  Harrison  v.  Gardner. 
July  23,  1817.     Plumer,  V.  C.  ofE.  —  2  Madd.  198. 

THE  defendant  having  been  partner  with  the  plaintiff,  and 
having,  on  his  retirement  from  the  firm,  accepted  a  sum 
awarded  to  him  by  arbitrators  in  respect  of  his  share  of  the 
good-will,  and  calculated  by  them  upon  the  understanding 
that  he  would  not  set  up  the  same  trade  in  the  same  street 
or  its  vicinity,  injunction  granted  to  restrain  him  from  setting 
up  the  same  trade  in  the  same  street  or  its  vicinity. 

P.  219.  "What  is  the  'good- will'  of  a  retail  shop  in  a  populous 
neighborhood  ?  '  Good-will '  is  defined  by  Lord  Eldon  to  be  '  the 
probability  that  the  old  customers  will  resort  to  the  old  place.' 
Oruttwell  v.  Lye,  17  Ves.  346.  A  person,  not  a  lawyer,  would  not 
imagine  that  when  the  good-will  and  trade  of  a  retail  shop  were  sold, 
the  vendor  might  the  next  day  set  up  a  shop  within  a  few  doors,  and 
draw  off  all  the  customers.  The  good-will  of  such  a  shop,  in  good 
faith  and  honest  understanding,  must  mean  all  the  benefit  of  the 
trade,  and  not  merely  a  benefit  of  which  the  vendor  might  the  next 
day  deprive  the  vendee.  The  authorities,  however,  are  strong  to 
show  that  the  sale  of  a  good-will  does  not  impart  restraint,  and  that 
a  person  selling  the  good-will  of  a  business,  for  however  large  a  con- 
sideration, is  not  prevented  from  setting  up  the  trade.  In  Shackle 
v.  Baker,  14  Ves.  468,  it  was  held  that  the  sale  of  a  good-will  leaves 
the  vendor  at  liberty  to  set  up  the  same  trade  in  any  other  situation. 
But  here  the  trade  is  carried  on  in  the  same  situation." 

12 


FABK  V,  PEARCE. 

26.   Williams  v.  Williams.     (1.) 
August  6,  1817.     Lord  Eldon,  C.  —  3  Mer.  157. 

OK  motion  by  the  defendant,  injunction  which  had  been 
granted  to  restrain  the  defendant  (among  other  things)  from 
divulging  a  secret  in  respect  of  a  medicine,  dissolved,  on  the 
affidavit  of  the  defendant  denying  the  truth  of  the  facts  as 
stated  upon  the  plaintiff's  affidavit,  and  on  the  ground  that 
there  was  no  secret.  And  Held,  that  it  was  doubtful  whether 
a  court  of  equity,  in  its  jurisdiction  to  decree  specific  per- 
formance of  an  agreement,  could  interfere  by  injunction  in 
such  a  case. 

"  I  do  not  think  that  the  court  ought  to  struggle  to  protect  this 
sort  of  secrets  in  medicine."  1 


27.  Kennedy  v.  Lee. 
November  17,  1817.     Lord  Eldon,  C.  —  S  Mer.  441. 

PARTNERSHIP  suit.  Held,  that  an  agreement  to  buy  up  his 
partner's  share  in  a  nursery  gardener's  business  did  not  bind 
the  purchasing  partner  to  pay  for  the  outgoing  partner's  share 
in  the  good-will.  And  Held,  that,  unless  there  were  some 
provisions  in  the  agreement  with  respect  to  the  good-will,  and 
preventing  the  outgoing  partner  from  carrying  on  business 
in  a  specified  locality,  the  latter  would  be  at  liberty  to  carry 
on  the  same  trade  "  where,  and  when,  and  with  whom  he 
pleased." 

28.  Farr  v.  Pearce. 
February  10,  1818.     Leach,  V.  C.  ofE.  —  3  Madd.  74. 

SUIT  by  the  personal  representative  of  A.,  who  had  entered 
into  articles  of  partnership  with  the  defendant  in  his  surgeon's 
practice,  and  had  paid  a  premium. 

The  defendant  having  sold  the  good-will  of  the  practice, 
after  the  death  of  A. :  Held,  upon  the  construction  of  the  ar- 
1  See  Burnett  v.  Phalon,  277. 

13 


GEE  V.  PBITCHARD. 

tides,  that  A.'s  representative  was  not  entitled  to  a  share  of 
the  money  produced  by  the  sale  of  the  good- will. 

"  In  this  case  the  articles  define  the  interest  which  the  representa- 
tives of  a  deceased  partner  are  to  take,  and  there  is  no  provision  which 
gives  them  the  benefit  of  the  good-will  of  the  concern.  But  if  the  gen- 
eral question  had  arisen  here,  I  think  it  would  have  been  difficult  to 
maintain  that  where  a  partnership  is  formed  between  professional 
persons  as  surgeons,  and  one  dies,  the  other  is  obliged  to  give  up  his 
business  and  sell  the  connection  for  the  joint  benefit  of  himself  and 
the  estate  of  his  deceased  partner.  When  such  partnerships  deter- 
mine, unless  there  be  stipulations  to  the  contrary,  each  must  be  at 
liberty  to  continue  his  own  exertions  ;  and  where  the  determination 
is  by  the  death  of  one,  the  right  of  the  survivor  cannot  be  affected. 
Such  partnerships  are  very  different  from  commercial  partnerships." 


29.  Williams  v.  Williams.   (2.) 
June  10,  1818.     Lord  Eldon,  C.  —  2  Swanst.  253  ;  1  Wils.  473. 

THE  plaintiffs  having  bought  up  the  interest  of  the  defend- 
ant, one  of  the  partners  in  their  coaching  business,  and  the 
defendant  having  undertaken  not  to  be  concerned  in  any  coach 
running  a  specified  route,  or  prejudicial  to  the  partnership 
business,  but  having  subsequently  begun  to  run  a  coach  in 
violation  of  the  agreement,  injunction  granted  to  restrain  klin 
from  so  doing. 

30.  Gee  v.  Pritchard. 
July  17,  1818.     Lord  Eldon,  C.  —  2  Swanst.  402. 

INJUNCTION  granted  to  restrain  the  publication  of  private 
letters. 

P.  413.  "  The  publication  of  a  libel  is  a  crime,  and  I  have  no 
jurisdiction  to  prevent  the  commission  of  crimes,  except,  of  course, 
such  cases  as  belong  to  the  protection  of  infants,  where  a  dealing  with 
an  infant  may  amount  to  a  crime,  —  an  exception  arising  from  that 
peculiar  jurisdiction  of  this  court." 

14 


EDMONDS  V.  BENBOW. 

31.  Yovatt  v.  Winyard. 
May  15,  1820.     Lord  Eldon,  C.  —  1  Jac.  tf  W.  394. 

THE  plaintiff,  being  the  proprietor  of  the  secret  recipes  for 
certain  veterinary  medicines,  having  taken  the  defendant  into 
his  employ  under  an  agreement  by  which  he  was  to  have  a 
salary  and  be  instructed  in  the  business  generally,  but  was  not 
to  be  taught  the  secrets,  the  defendant  secretly  acquainted 
himself  with  the  secrets,  and,  setting  up  for  himself,  made  up 
the  medicines  and  sold  them  with  directions  for  use  copied 
from  the  plaintiff's. 

On  motion  by  the  plaintiff,  injunction  granted  to  restrain 
the  defendant  from  using  or  communicating  the  secret  recipes, 
except  as  to  the  treatment  of  animals  then  in  his  care,  and 
from  printing  and  publishing  the  directions,  on  the  ground 
that  the  defendant  had  become  acquainted  with  the  secrets 
by  breach  of  trust. 

32.    Baxter  v.  Conolly. 
July  13,  1820.     Lord  Eldon,  C.—  1  Jac.  §•  W.  576. 

MOTION  for  an  injunction,  to  restrain  an  action  at  law 
brought  to  recover  an  annual  payment  due  by  way  of  pur- 
chase money  for  good-will,  refused. 

P.  580.  "  The  court  certainly  will  not  execute  a  contract  for  the 
sale  of  a  good-will ;  at  the  same  time,  it  will  not  enjoin  against  any 
proceeding  at  law  under  such  an  agreement.  Suppose,  for  instance, 
there  is  a  contract  for  the  good-will  of  a  shop  ;  it  cannot  be  conveyed, 
and  the  court  would  say,  '  Go  and  make  what  you  can  of  it  at 
law ;  if  you  can  recover,  very  well,  we  won't  prevent  you ;  if  you 
cannot,  very  well  again,  we  won't  assist  you.' " 


33.  Edmonds  v.  Benbow. 

February  20,  1821.    Leach,  V.  C.  of  E.  —  Seton,  3d  ed.  905  ;  4th  ed.  238. 

THE  plaintiff  being  the  proprietor  and  publisher  of  a  news- 
paper called  The  Real  John  Bull,  injunction  granted  to  re- 

15 


BRYSON  V.  WHITEHEAD. 


strain  the  publication  by  the  defendants  of  a  newspaper  called 
The  Real  John  Bull,  or  The  Old  Real  John  Bull,  and  of  any 
other  newspaper  as  a  continuation  of  the  plaintiff's  news- 


paper.1 


34.    In  re  The  Edinburgh  Correspondent  Newspaper. 
May,  1822.    Ct.  of  Sess.  —  Ct.  of  S ess.  Cos.  1st  Ser.  I.  (New  ed.  407,  n.) 

THE  plaintiffs  being  the  proprietors  of  a  newspaper  enti- 
tled The  Edinburgh  Correspondent,  interdict  granted  to  re- 
strain the  publication  of  a  new  paper  under  that  name. 

Per  Lord  Balgray.  "The  partners  under  the  existing  firm,  as 
publishers  of  the  former  paper,  have  a  right  to  prevent  any  paper 
from  being  published  under  such  title  or  firm  as  may  mislead  the 
public  into  a  belief  that  it  is  the  former  paper."  2 

35.   M'Cormick  v.  M'Cubbin. 

July  4,  1822.     Ct.  of  Session.—  Ct.  of  Sess.  Cos.  1st  Ser.  1.  541   (New 

ed.  496.) 

ON  the  death  of  a  person  entitled  to  one  half  of  the  copy- 
right and  good-will  of  a  newspaper  called  The  Ayr  Adver- 
tiser, bill  of  suspension  and  interdict  presented  by  the  persons 
entitled  to  the  other  half  (who  had  themselves  refused  to  pur- 
chase the  share  of  the  deceased  proprietor)  to  restrain  the  lat- 
ter's  executors  from  offering  the  half  share  for  sale  refused, 
on  the  ground  that  the  copyright  and  good-will  of  a  news- 
paper were  a  species  of  property  capable  of  transmission  by 
the  proprietor  to  his  representatives,  and  that  the  latter  were 
entitled  to  the  benefit  to  be  derived  from  a  sale  of  the  share. 


36.  Bryson  v.  Whitehead. 
November  25,  1822.     Leach,  V.  C.  of  E.  —  l  S.  fr  S.  74  ;  1  L.  J.  Ch.  42. 

IN  a  suit  by  the  vendor  of  the  good-will  of  his  dyeing  busi- 
ness, with  the  exclusive  use  of  a  secret  mode  of  dyeing,  spe- 

1  See  Hogg  v.  Kirby,  10.  *  Ibid.   10. 

16 


GREEN  V.  FOLGHAM. 

cific  performance  of  the  agreement  between  the  vendor  and 
purchaser  granted. 

"  Although  the  policy  of  the  law  will  not  permit  a  general  re- 
straint of  trade,  yet  a  trader  may  sell  a  secret  of  business,  and  re- 
strain himself  generally  from  using  that  secret.  Let  the  master,  in 
settling  the  deed  which  is  to  give  effect  to  this  agreement,  introduce 
a  general  covenant  to  restrain  the  use  of  the  secret  for  twenty  years, 
and  a  covenant  limited  in  point  of  locality,  as  to  carrying  on  the  or- 
dinary business  of  a  dyer,  both  parties  being  willing  that  the  agree- 
ment should  be  so  modified." 


37.   Cook  v.  Collingridge. 

January  27,  1823.      Lord  Eldon,  C.  —  Jac.  607  ;  1  L.  J.  Ch.  74;   Colbjer 
on  Partnership  (2d  «/.),  215. 

PARTNERSHIP  suit.  On  petition  in  this  cause  (see  Coll- 
yer,  ubi  sup.')  subsequent  to  the  decision  of  the  above  date  : 

Held,  that  the  partnership  having  expired  by  mere  efflux- 
ion  of  time,  the  former  copartners  were  under  no  obligation, 
after  the  sale  of  the  business,  to  refrain  from  carrying  on  the 
same  kind  of  business,  or  uniting  in  a  new  partnership  with 
any  other  persons,  and  that  notice  of  this  must  be  inserted  in 
the  particulars  of  sale  of  the  partnership  property  and  effects. 

38.    Green  v.  Folgham. 
June  10,  1823.    Leach,  V.  C.  ofE.  —  l  S.  §•  S.  398;  1  L.  J.  Ch.  203. 

THE  secret  recipe  of  a  medical  preparation,  called  "  Dr. 
Johnson's  Ointment  for  the  Eyes"  having  been  settled  upon 
the  parents  of  the  parties  in  the  suit,  and  after  the  death  of 
the  survivor  of  them,  to  be  sold  for  the  benefit  of  the  plain- 
tiffs and  defendant,  the  mother,  being  the  surviving  parent, 
communicated  the  secret  to  the  defendant  for  the  benefit  of 
himself  and  the  plaintiffs,  his  younger  brothers  and  sisters. 

In  a  suit  by  the  younger  brothers  and  sisters,  after  the 
mother's  death,  Held,  that  the  defendant  held  the  secret  upon 
the  trusts  of  the  settlement,  and  must  account  for  the  profits 
2  17 


SYKES  V.  SYKES. 

since  his  mother's  death  (an  allowance  being  made  him  for 
his  trouble),  and  that  an  issue  must  be  directed  to  ascertain 
the  value  of  the  secret. 

"  If  this  secret  could  be  made  a  subject  of  sale,  the  plaintiffs 
would  be  next  entitled  to  ask  from  the  court  that  a  sale  should  be 
directed  accordingly.  But  inasmuch  as  the  court  has  no  possible 
means  either  to  communicate  this  secret  to  a  purchaser  with  cer- 
tainty, or  to  protect  him  in  the  enjoyment  of  it,  a  sale  becomes  im- 
practicable. But  although  the  court  cannot  direct  a  sale,  it  has  the 
power  of  taking  a  course  which,  in  point  of  advantage,  will  be  equiv- 
alent to  the  plaintiffs.  It  can  inquire  what  would  be  the  value  of  this 
secret  to  sell,  provided  it  could  be  made  the  subject  of  sale ;  and  the 
annual  profits  which  have  actually  been  made  by  the  sale  of  the  oint- 
ment from  the  death  of  the  mother  will  be  a  fair  criterion  by  which 
that  value  may  be  estimated." 


39.  Constable  &  Co.  v.  Brewster. 

July  6,  1824.     Ct.  of  Session—  Ct.  of  Sess.  Cas.  1st  Ser.  III.  215  (New 

ed.  152). 

THE  plaintiffs  having  employed  the  defendant  for  five  years 
as  one  of  the  editors  of  The  Edinburgh  Philosophical  Journal, 
which  was  described  on  the  title-page  as  "  conducted  by  Dr. 
Brewster  and  Professor  Jameson,"  and  the  defendant  having, 
at  the  end  of  the  five  years,  separated  from  the  plaintiffs 
and  announced  the  publication  of  "  No.  1  of  the  New  /Series 
of  the  Edinburgh  Philosophical  Journal,  conducted  by  Dr. 
Brewster"  interdict  granted  to  restrain  the  publication  of  a 
work  under  that  title.1 


40.  Sykes  v.  Sykes. 

November  11,  1824.     King' 's  Bench.  —  3  B.  S?  Cr.  541 ;  5  D.  $•  R.  292  ;  3 

L.  J.  K.  B.  46. 

THE  plaintiff  having  been  in  the  habit  of  marking  his  shot- 
belts,  powder-flasks,  etc.,  with  the  words  "  Sykes1  Patent " 
(though  the  patent  which  had  been  taken  out  had  been 

1  See  Hogg  v.  Kirby,  10. 

18 


COSLAKE  V.  TILL. 

held  to  be  invalid),  the  defendants  copied  this  mark  on  their 
own  goods. 

Action  on  the  case. 

Held,  by  Bayley,  J.,  at  the  trial,  and  afterwards  by  the 
Court  of  K.  B.,  that  the  defendants  had  no  right  to  mark 
their  goods  as  and  for  the  plaintiff's  goods,  and  that  the  fact 
that  the  immediate  purchasers  knew  who  was  the  maker  made 
no  difference. 

Per  Abbott,  C.  J.  "  It  was  established  most  clearly  that  the  de- 
fendants marked  the  goods  manufactured  by  them  with  the  words 
'  Sykes'  Patent,'  in  order  to  denote  that  they  were  of  the  genuine 
manufacture  of  the  plaintiff ;  and  although  they  did  not  themselves 
sell  them  as  goods  of  the  plaintiff's  manufacture,  yet  they  sold  them 
to  retail  dealers  for  the  express  purpose  of  being  resold  as  goods  of 
the  plaintiff's  manufacture.  I  think  that  is  substantially  the  same 
thing."  1 


41.  Snowden  v.  Noah. 

January,  1825.     N.   Y.   Chancery :   Sandford,  C.  —  Hopk.  347  ;  R. 

Cox,  1. 

MOTION  by  a  person  who  had  purchased  the  right  to  pub- 
lish a  newspaper  called  The  National  Advocate  in  the  city  of 
New  York,  for  an  injunction  to  restrain  the  vendor  from  start- 
ing a  paper  in  that  city  called  The  New  York  National  Ad- 
vocate, refused,  on  the  ground  that  the  names  were  suffi- 
ciently distinct  to  prevent  deception.2 

42.  Coslake  v.  Till. 
August  4,  1826.     Lord  Gifford,  M.  R.  —  1  Russ.  376. 

SUIT  by  the  purchaser  for  the  specific  performance  of  an 
agreement  by  a  tenant  at  will  of  a  public-house  for  the  sale  of 
the  possession,  trade,  and  good- will  of  the  house  at  a  fixed  sum, 
and  of  the  stock  and  furniture  at  a  valuation,  one  of  the  terms 

1  See  Edelstonv.  Viet:.  119  ;  Leather         2  See  Hogg  v.  Kirby,  10. 
Cloth  Co.  v.  American  Leather  Cloth  Co. 
223. 

19 


CHISSUM  V.  DEWES. 

being  that  possession  should  be  taken  and  the  money  paid  on 
a  given  day. 

Held,  (1.)  that  time  was  of  the  essence  of  the  contract,  and 
that  the  plaintiff  not  having  been  ready  with  the  purchase 
money  till  the  day  after  the  given  day,  specific  performance 
could  not  be  granted  ;  (2.)  that  it  was  doubtful  whether  a  court 
of  equity  would  enforce  the  performance  of  a  contract  for  the 
purchase  of  a  subject  matter,  of  which  the  good-will  of  a  pub- 
lic-house, unconnected  with  any  fixed  interest  in  the  premises, 
formed  the  principal  part. 


43.  Dakin  v.  Cope. 

June  1,  1826  ;  April,  1827.     Plumer,  M.  R. ;  Lord  Giffbrd,  M.   R. ; 
Lord  Eldon,  C.  —  2  Russ.  170. 

IN  a  suit  by  the  executors  of  a  publican,  with  whom  the 
defendant  had  entered  into  an  agreement  for  the  purchase  of 
the  leasehold  public-house  and  the  good-will  and  licenses 
connected  therewith,  specific  performance  of  the  agreement 

granted. 

» 

44.  Delondre  v.  Shaw. 
April  16,  1828.     Shadwell,  V.  C.  ofE.  —  '2  Siin.  237. 

SUIT  commenced  jointly  by  Delondre,  the  inventor,  and 
Pelletier,  the  compounder,  by  agreement  with  Delondre,  of 
"  Sulphate  of  Quinine,"  to  restrain  the  imitation  of  the  la- 
bels and  seals  used  on  the  bottles  of  quinine. 

Demurrer  allowed,  on  the  ground  that  the  parties  who  asked 
joint  relief  were  not  entitled  to  joint  relief,  Pelletier  not 
being  shown  to  have  any  interest  in  the  labels  and  seals  in 
question. 


45.  Chissum  v.  Dewes. 
July  21,  1828.     Leach,  M.  R.  —  5  Russ.  29. 

THE  unexpired  term  in  a  house,  and  the  good-will  of  the 
business  there  carried  on,  having  been  sold  in  a  creditor's 
suit,  with  the  consent  of  an  equitable  mortgagee,  and  having 

20 


DAY  V.  BINNING. 

brought  a  price   less  in  amount  than  the  debt  due   to  the 
equitable  mortgagee  : 

Held,  that  the  equitable  mortgagee  was  entitled  to  the 
whole  of  the  purchase  money,  whether  arising  from  the  value 
of  the  good-will,  or  from  the  value  of  the  lease  apart  from  the 
good-will. 

"  The  good-will  of  the  business  is  nothing  more  than  an  advantage 
attached  to  the  possession  of  the  house  ;  and  the  mortgagee,  being 
entitled  to  the  possession  of  the  house,  is  entitled  to  the  whole  of 
that  advantage.  I  cannot  separate  the  good-will  from  the  lease." 


46.  Spicer  v.  James. 
November,  1830.     Leach,  M.   R.  —  Collyer  on  Partnership,  Id  ed.  104. 

THE  administrator  of  an  attorney  having  carried  on  the 
business  of  the  intestate  until  the  latter's  son  came  of  age, 
upon  which  he  transferred  the  business  to  the  latter,  the  lat- 
ter afterwards  became  insolvent. 

Suit  by  one  of  the  creditors  against  the  administrator  for 
an  account  of  the  profits  of  the  business  while  managed  by 
him,  and  insisting  that  he  was  indebted  to  the  intestate's 
estate  in  respect  of  the  good-will  of  the  business,  dismissed,  on 
the  ground  that  the  good-will  of  a  trade  of  a  personal  nature 
as  that  of  an  attorney  was  not  a  subject  of  administration. 


47.  Day  v.  Binning. 

January,  21,  1831.     Shadwell,   V.  C.  of  E.  —  C.  P.  Coop.  489;  1  Leg. 

Obs.  205. 

THE  plaintiffs  being  manufacturers  of  blacking,  which  they 
sold  in  bottles  labelled,  among  other  things,  with  the  words 
"  Manufactured  by  Day  $•  Martin"  the  defendants  began  to 
sell  other  blacking  in  similar  bottles,  bearing  similar  labels, 
except  that  for  the  words  "  Manufactured  by  Day  $  Martin  " 
were  substituted  the  words  "  Equal  to  Day  £  Martin's" 
"  equal  to  "  being  in  very  small  letters. 

On  motion  by  the  plaintiffs,  injunction  granted  to  restrain 

21 


ARCHBOLD  V.  SWEET. 


the  defendants  from  using  labels  imitated  from   the   plain- 
tiffs'. 


48.  Henry  v.  Price. 
March  29,  1831.     Shadwell,  V.  C.  of  E.—l  Leg.  Obs.  364. 

THE  plaintiff  preparing  calcined  magnesia,  in  succession  to 
his  father,  and  selling  it  in  bottles  of  a  special  shape,  labelled 
"  Henry's  Calcined  Magnesia,  Manchester"  the  defendant 
began  to  prepare  magnesia,  and  to  sell  it  in  similar  bottles, 
similarly  labelled. 

On  motion  by  the  plaintiff,  injunction  granted  to  restrain 
the  defendant  from  continuing  to  infringe  the  plaintiff's 
rights.1 


49.  Archbold  v.  Sweet. 

February  9,  1832.     Lord  Tenterden,  C.  J.,  at  N.P.  —  lM.fy  Rob.  162; 

5  C.  if  P.  219. 

THE  publisher  of  a  legal  work  issued  an  inaccurate  edition 
of  the  work,  falsely  purporting  to  have  been  prepared  by  the 
author. 

Action  on  the  case  by  the  author. 

Held,  that  he  was  entitled  to  recover  damages  for  the  in- 
jury done  to  his  reputation  by  the  defendant's  conduct,  not- 
withstanding that  the  defendant  was  the  owner  of  the  copy- 
right. 

"  The  question  is  for  the  jury,  whether  the  third  edition  in  the 
form  in  which  it  is  put  forth  would  be  understood  by  purchasers  to 
be  by  the  plaintiff;  if  purchasers  who  paid  reasonable  attention  to 
its  contents  would  not  so  understand  it,  the  verdict  must  be  for  the 
defendant ;  if  they  would,  for  the  plaintiff. 

"  The  nearest  resemblance  to  the  present  case  seems  to  me  to  be 
furnished  by  those  cases  in  which  a  person,  having  a  reputation  for 
the  manufacture  of  a  particular  commodity,  but  not  protected  by  a 
patent,  brings  an  action  against  another  for  selling  an  inferior  article 
in  his  name.  The  cases  are  not  exactly  alike  :  there  the  sale  of  the 

1  See  Williams  v.  Johnson,  150. 

22 


GOUT  V.  ALEPLOGLU. 


commodity  is  affected,  here  the  character  of  the  author ;  but  they 
bear  a  close  analogy  to  each  other."  1 


5O.  Blofeld   v.   Payne. 

January  12,  1833.     King's  Bench.  —  !  B.  &  Ad.  410  ;  1  N.  &  M.  353 ;  2 
L.  J.  K.  B.  N.  S.  68. 

THE  plaintiff  being  a  manufacturer  of  metallic  hones,  which 
he  sold  in  certain  special  envelopes  containing  directions  for 
use,  etc.,  the  defendant  sold  other  hones  in  similar  envelopes. 

Action  on  the  case.  Held,  that  although  no  specific  dam- 
age was  proved,  and  the  jury  found  the  defendant's  articles 
to  be  equal  in  quality  to  the  plaintiff's,  the  plaintiff  was  still 
entitled  to  some  damages  for  the  invasion  of  his  right. 

Lord  Den  man,  C.  J.,  told  the  jury  at  the  trial  that  "  even  if  the 
defendant's  hones  were  not  inferior,  the  plaintiff  was  entitled  to  some 
damages,  inasmuch  as  his  right  had  been  invaded  by  the  fraudulent 
act  of  the  defendant." 

Per  Littledale,  J.  "  The  act  of  the  defendant  was  a  fraud  against 
the  plaintiff,  and  if  it  occasioned  him  no  specific  damage,  it  was  still 
to  a  certain  extent  an  injury  to  his  right." 


51.  Gout  v.  Aleploglu. 

April  15,  1833.    Shadwell,  V.  C.  ofE.  —  6  Beav.  69,  n.  ;  5  Leg.  Obs.  495 
Chilly  Gen.  Pr.  721. 

THE  plaintiff  having  long  manufactured  watches  for  the 
Turkish  and  Levantine  market,  and  marked  them  with  his 
name,  the  Turkish  word  "  Pessendede  "  (meaning  "  warrant- 
ed "),  a  sprig,  etc.,  the  defendants  began  to  manufacture  and 
export  watches  similarly  marked. 

On  motion  by  the  plaintiff,  Held,  that  the  plaintiff  had 
acquired,  by  long  previous  usage,  the  exclusive  right  to  desig- 
nate his  watches  by  that  Turkish  word  in  Turkish  characters, 

1  See  Lord  Byron  v.  Johnston,  23. 

23 


KANSOME  V.  BENTALL. 

and  that  an  injunction  must  be  granted  to  restrain  the  de- 
fendants from  infringing  the  plaintiff's  rights.1 

52.  Martin  v.  "Wright. 
August  9,  1833.     Shadwdl,  V.  C.  of  E.  —  6  Sim.  297. 

THE  defendant  exhibited  a  large  painting,  which  he  repre- 
sented to  be  a  copy  of  a  picture  by  the  plaintiff. 

Suit  for  an  injunction  and  account. 

Held,  that  equitable  relief  could  not  be  granted  until  the 
plaintiff's  right  had  been  established  at  law. 

"  With  respect  to  the  defendant  representing  his  copy  as  Martin's 
picture,  it  must  be  either  better  or  worse  :  if  it  is  better,  Martin  has 
the  benefit  of  it ;  if  worse,  then  the  misrepresentation  is  only  a  sort 
of  libel,  and  this  court  will  not  prevent  the  publication  of  a  libel. 
If  Martin  had  exhibited  his  picture  as  a  diorama,  then  he  might  have 
been  entitled  to  an  injunction."  2 

53.  Ransome  v.  Bentall. 
December  11,  1833.     Shadwdl,  V.  C.  ofE.  —  3  L.  J.  Ch.  N.  S.  161. 

THE  plaintiffs  having  been  in  the  habit  of  marking  their 
patent  ploughshares  with  the  words  "Ransome's  Patent," 
and  the  letters  "  H.  H."  and  also  with  a  number  denoting 
size,  as  "  6,"  the  defendant  began  to  sell  ordinary  plough- 
shares stamped  with  a  similar  mark. 

Injunction  granted  to  restrain  the  defendant  from  continu- 
ing to  infringe. 

"  If  the  defendant  had  been  in  the  habit  of  marking  his  ploughs 
with  only  '  H.  H.  6,'  and  if  I  could  see  the  marks  so  placed  that  no 
person  could  be  deceived  in  purchasing  the  ploughs,  then  I  might  re- 
fuse the  injunction  as  to  that  part  of  the  prayer.  But  here  the  de- 
fendant wants  me  to  decide  ab  ante  that  no  possible  use  of  If.  H.  6 ' 
may  have  the  effect  of  misleading  persons,  and  therefore  the  whole 
prayer  must  be  granted." 

1  Of  this  case  the  author  of  a  highly  on  Trade-marks,  §  223.     Certainly  the 

esteemed  work  on    trade-marks   says  :  word  would  not  be  broadly  protected 

"  The  court  did  not  decide  that '  Pes-  as  such  to-day. 
sendede'  was  a  trade-mark."    Browne          2  See  Lord  Byron  v.  Johnston,  23. 

24 


POWER  v.  BARHAM. 


54.  B.  v.  Ogden. 

November  29,  1834.     C.   C.  C. :  Bolland,  B.  £  Park,  J.  —  6  C.  &  P. 

631. 

Ox  an  indictment  under  13  Geo.  III.  c.  52,  s.  14,  and  38 
Geo.  III.  c.  69,  s.  7,  for  unlawfully  transposing  the  Hall- 
mark of  the  lion  passant  from  one  gold  ring  to  another  : 

Held,  that  the  language  of  the  act  being  express,  the 
prisoner  must  be  convicted,  notwithstanding  that  both  rings 
were  genuine,  and  that  the  prisoner  had  acted  without  any 
fraudulent  intention.  A  pardon  was  subsequently  granted. 


55.  Lewis  v.  Langdon. 

May  30,  1835.     Shadwell,  V.  C.  of  E.  —  7  Sim.  421 ;  4  L.  /.  Ch.  N.  S. 

258. 

AFTER  the  dissolution  of  the  firm  of  "  Brookman  $•  Lang- 
don "  (makers  of  lead  pencils,  which  they  stamped  with 
their  name)  by  the  death  of  one  of  the  partners,  the  surviv- 
ing partner,  J.  Lewis,  took  a  new  partner,  and  began  to 
carry  on  business  as  "  James  Lewis  $  Co.,  Successors  to 
Brookman  $  Langdon"  and  the  defendant,  one  of  the  execu- 
tors of  the  deceased  partner,  subsequently  began  to  carry  on 
business  as  "  Brookman  &  Langdon." 

On  motion  by  the  surviving  partner  in  the  old  firm  and 
his  new  partner,  injunction  granted  to  restrain  the  defendant 
from  carrying  on  business  as  "  Brookman  $  Langdon  "  until 
after  the  trial  of  an  action  at  law. 


56.  Power  v.  Barbara. 

November  26,  1835;  January  14,  1836.  Coleridge,  J.,  at  N.  P.  —  7  C. 
if  P.  356  :  1  M.  if  Rob.  507.  King's  Bench.  —  4  Ad.  £  E.  473  ;  6  N.  tf 
M.  62  ;  1  H.  §•  W.  683  ;  5  L.  J.  K.  B.  N.  S.  88. 

THE  plaintiff  bought  from  the  defendant  certain  pictures 
which  he  said  were  by  Canaletto,  and  which  were  described 

25 


KNOTT  V.  MORGAN. 

in  the  bill  of  parcels  as  "  Four  Pictures,  Views  in  Venice  — 
Canaletto"  but  which  turned  out  not  to  be  by  that  painter. 

Action  of  assumpsit.  Held,  that  it  was  for  the  jury  to  say 
what  was  the  effect  of  the  words  in  the  bill  of  parcels,  and 
whether  they  implied  a  warranty  of  genuineness,  or  conveyed 
only  a  description  or  an  expression  of  opinion.1 


57.   Knott  v.  Morgan. 

July  27,  August  19, 1836.     Lord  Langdale,  M.  R.;  Lord  Cottenham,  C.— 

2  Keen,  213. 

THE  omnibuses  of  the  London  Conveyance  Company  being 
painted,  and  their  servants  clothed,  in  a  special  and  distinc- 
tive manner,  the  defendant  began  to  run  omnibuses  similarly 
painted,  with  servants  similarly  clothed. 

On  motion  by  the  plaintiffs,  injunction  granted  to  restrain 
the  defendant  from  imitating  the  plaintiffs'  line  of  omnibuses. 

Per  Lord  Langdale,  M.  R.  "  It  is  not  to  be  said  that  the  plaintiffs 
have  any  exclusive  right  to  the  words  '  Conveyance  Company,'  or 
'  London  Conveyance  Company,'  or  any  other  words ;  but  they  have 
a  right  to  call  upon  this  court  to  restrain  the  defendant  from  fraudu- 
lently using  precisely  the  same  words  and  devices  which  they  have 
taken  for  the  purpose  of  distinguishing  their  property,  and  thereby 
depriving  them  of  the  fair  profits  of  their  business  by  attracting  cus- 
tom on  the  false  representation  that  carriages,  really  the  defendant's, 
belong  to  and  are  under  the  management  of  the  plaintiffs." 

In  Woollam  v.  Ratdiff,  1  H.  &  M.  259-261,  Wood,  V.  C.,  remark- 
ing upon  the  above  case,  said  that  there  "  the  words  '  Conveyance 
Company]  the  green  omnibus,  etc.,  were  held  sufficient  together  to 
entitle  the  plaintiffs  to  an  injunction.  The  defendant  might  have  had 
those  words  painted  on  a  yellow  omnibus  without  objection,  and  so 
of  the  other  resemblances ;  the  wrong  lay  in  their  accumulation,  not 
in  any  one  of  them  alone."  2 

1  See  Jendwine  v.  Slade,  8.  had    an    exclusive    right.      The   court 

2  This  case,  perhaps,  marks  a  pro-  found  in  substance  that  the  defendant 
nounced  advance  in  the  law  of  trade-  had  imitated    the   appearance  of   the 
marks.     It  differs  from  earlier  cases  in  plaintiffs'   coaches,   besides    using   the 
that  relief  was  granted  although  it  was  words  by  which  its  line  was  known, 
not  made  to  appear  that  the  plaintiff  It  is  quite  apparent  that  the  words 

26 


THOMSON  V.  WINCHESTER. 


58.    Hitchcock  v.  Coker. 

February  6,  1837.    ExcJi.  Ch.  —  Q  Ad.  £  E.  438-454 ;  1  N.  Sf  P.  796-814  ; 
2  H.  fr  W.  464-471 ;  6  L.  J.  Ex.  N.  S.  266-269. 

ACTION  of  assumpsit. 

Per  Tindal,  C.  J.  "  The  good- will  of  a  trade  is  a  subject  of  value 
and  price.  It  may  be  sold,  bequeathed,  or  become  assets  in  the  hands 
of  the  personal  representative  of  a  trader." 


59.    Thomson  v.  Winchester. 
March,  1837.     Mass.  Sup.  Ct.—  19  Pick.  214;  R.  Cox,  7. 

THE  plaintiff  selling  certain  medicines  of  his  own  prepara- 
tion under  the  name  of  "  Thomsonian  Medicines,"  the  defend- 
ant began  to  sell  inferior  medicines  under  the  same  name. 
Action  on  the  case. 


"  Conveyance  Company  "  were  descrip- 
tive and  could  not  be  monopolized ;  but 
the  defendant  painted  his  coaches  so 
that  they  would  not,  under  ordinary 
circumstances,  be  distinguished  from 
the  plaintiffs'.  There  was  an  obvious 
attempt  to  trade  upon  the  plaintiffs' 
reputation,  a  constructive  fraud  coupled 
with  pecuniary  loss,  which  was  made 
the  ground  for  the  issuance  of  a  broad 
injunction. 

The  case  is  not  the  same  as  Stone  v. 
Carlin,  where  the  use  of  the  words 
''Irving  Hotel "  upon  coaches  and  badges 
was  restrained,  or  Marsh  v.  Billings, 
where  the  use  of  the  words  "Revere 
Souse  "  was  enjoined.  In  these  cases 
and  others  there  was  an  exclusive  right 
to  the  use  of  the  names  of  the  hotels, 
out  of  which  flowed  the  exclusive  right 
to  use  the  name  on  coaches,  badges,  etc. 

The  principle  laid  down  in  Knott  v. 
Morgan  was  distinctly  reiterated  by 
Lord  Langdale  in  Croft  v.  Day,  76, 
who  concluded  an  opinion  as  follows :  — 

"My  decision  does  not  depend  on 
any  peculiar  or  exclusive  right  the 


plaintiffs  have  to  use  the  names  of  Day 
&  Martin,  but  upon  the  fact  of  the  de- 
fendant's using  those  names  in  connec- 
tion with  certain  circumstances,  and  in 
a  manner  calculated  to  mislead  the 
public,  and  to  enable  the  defendant  to 
obtain,  at  the  expense  of  Day's  estate, 
a  benefit  for  himself,  to  which  he  is  not 
in  fair  and  honest  dealing  entitled." 

The  same  view  has  been  repeatedly 
expressed  by  the  ablest  English  and 
American  judges,  and  has  long  been 
settled  law. 

In  McLean  v.  Fleming,  580,  Judge 
Clifford,  delivering  the  unanimous  opin- 
ion of  the  Supreme  Court  of  the  United 
States,  said :  — 

"  Nor  is  it  necessary,  in  order  to  give 
a  right  to  an  injunction,  that  a  specific 
trade-mark  should  be  infringed  ;  but  it 
is  sufficient  that  the  court  is  satisfied 
that  there  was  an  intent  on  the  part  of 
the  resporident  to  palm  off  his  goods  as 
the  goods  of  the  complainant." 

See  Lee  v.  Haley,  325  ;  Williams  v. 
Johnson,  150. 


27 


THOMSON  V.  WINCHESTER. 

Held,  (1.)  that  a  plaintiff  who  sold  medicines  under  a  cer- 
tain name  was  entitled  to  recover  at  least  nominal  damages 
from  another  person  who  had  sold  other  medicines  under  that 
name,  or  had  sold  them,  or  placed  them  in  the  hands  of  others 
to  be  sold,  "  as  and  for  "  the  plaintiff's  medicines ;  (2.)  but 
that  there  was  no  exclusive  right  to  compound  and  sell  an  un- 
patented  medicine ;  (3.)  that  there  was  no  exclusive  right  in 
the  name,  if  it  had  become  generic  and  descriptive  of  a  class 
of  medicines  ;  (4.)  that  the  sale  of  inferior  medicines  under  a 
name  which  had  become  generic  and  descriptive  gave  no  right 
to  another  person  selling  medicines  under  the  same  name  to 
recover  damages,  though  his  medicines  had  become  discred- 
ited by  the  inferiority  of  the  medicines  sold  under  the  same 
name ;  (5.)  that  a  new  trial  must  be  granted. 

Per  Shaw,  C.  J.  "  The  right  to  make  and  to  sell  is  common  to 
all,  if  no  deceit  is  practised  by  one,  in  falsely  assuming  the  name  and 
credit  of  another."  1 

1  The  use  of  descriptive  words  for  there  can  be  no  foundation  for  an  ex- 
purposes  of  description  is  a  common  elusive  right  to  use. 
right  which  courts  have  uniformly  re-  A  number  of  the  later  cases  proceed 
fused  to  disturb;  but  the  fact  that  a  upon  principles  which  are  distinctly 
word  is  technically  descriptive  will  not  different.  They  assume  that  the  fact 
always  justify  its  employment.  It  is  that  a  word  has  been  truthfully  used 
thought  the  cases  disclose  a  well-de-  by  a  defendant — that  it  is  as  true  of  A.'s 
fined  conflict  of  principle.  The  weight  goods  as  it  is  of  B.'s — is  not  in  itself 
of  authority  is  to  the  effect  that  a  de-  enough ;  they  go  below  the  surface,  and 
scriptive  term  may  be  employed  by  a  finding  that  the  truth  is  used  as  a  cloak 
defendant,  even  though  it  has  long  been  for  fraud,  unmask  and  restrain  the 
associated  with  plaintiff's  goods ;  and  wrong.  They  rest,  not  upon  the  as- 
it  has  even  been  held  that  this  is  true  sumption  that  there  must  be  a  right  of 
where  the  term  may  have  been  selected  property,  but  upon  the  broad  principle 
by  the  defendant  to  enable  him  to  trade  that  equity  abhors  fraud,  and  will  for- 
upon  plaintiffs  reputation.  The  phi-  bid  the  continuance  of  that  in  which 
losophy  of  this  doctrine  is,  that  the  fraud  and  injury  are  coexistent  factors. 
word  having  a  natural  signification  See  Lee  v.  Haley,  325;  Williams  v. 
which  is  as  true  in  its  application  to  Johnson,  150. 
one  man's  product  as  it  is  to  another's, 

28 


PIDDING  V.  HOW. 


6O.    Pidding  v.  How. 

June  21,  1837.     Skadwell,  V.  C.  o/E.  —  S  Sim.  477;  6  L.  J.  Ch.  N.  S. 

345. 

THE  plaintiff  having  sold  tea  under  the  name  of  "Howqucfs 
Mixture"  and  in  packages  marked  in  a  special  manner,  the 
defendant  began  to  sell  tea  under  the  same  name,  in  similar 
packages. 

On  motion  by  the  defendant  to  dissolve  an  injunction, 
which  had  been  granted  ex  parte  to  restrain  him  from  infring- 
ing the  plaintiff's  rights  : 

Held,  that  the  plaintiff  was  primd  facie  entitled  to  an  in- 
junction ;  but  that  the  plaintiff  having  in  his  advertisements 
made  a  number  of  false  representations  to  the  public,  with 
respect  to  the  origin,  composition,  and  value  of  his  tea,  the 
injunction  ought  not  to  have  been  granted  until  he  had  estab- 
lished his  right  at  law,  and  must  be  dissolved,  liberty  being 
given  to  bring  an  action. 

"  It  is  a  clear  rule,  laid  down  by  courts  of  equity,  not  to  extend 
their  protection  to  persons  whose  case  is  not  founded  in  truth."  1 

1  Where  the  interposition  of  a  court  moved  by  defences  of  an  artificial  char- 

of  equity  is  sought,  the  defence  of  in-  acter.     The  rule  is,  probably,  nowhere 

equitable  conduct  on  the  part  of  the  more  clearly  stated  than  in  the  case  of 

complainant  is  a  familiar  one,  and  has  Meriden  Britannia  Company  v.  Parker, 

been  the  subject  of  much  discussion.  409,  decided   by  the   Supreme  Court 

There  can  be  no  doubt  that  where  the  of   Connecticut.     It  was   there  said  : 

trade-mark  or  label  of  the  plaintiff  in-  "  Courts  of  equity  will  not  protect  a 

volves  the  use   of  what  may  be  justly  trade-mark   that   deceives  the    public, 

regarded  as  an  actual  or  constructive  We  do  not  suppose,  however,  that  that 

misrepresentation,  such  as  is  really  cal-  deception  need  be  of  such  a  character 

culated  to  mislead  the  public,  or  where  as  to  work  a  positive  injury  to  purchas- 

the  article  is  ma/um  in  se,  a  court  of  ers,  nor,  on  the  other  hand,  that  every 

equity  will  leave  the  parties  where  it  erroneous  impression  which  the  public  or 

finds  them.  a  portion  of  the  public  may  receive  will  be 

There  is  little  uncertainty  in  the  ap-  sufficient  to  destroy  the  validity  of   a 

plication  of  the  rule  if  the  misrepresen-  trade-mark.     The  question  is,  whether 

tation  or  fraud  is  clear ;  but  it  is  often  ....  the  representation  is  of  such  a 

difficult  to  determine  whether  a  depart-  character  as  to  defeat  the  petitioner's 

ure  from  the  strict  letter  of  the  truth  claim  to  protection." 

is  to  be  regarded  as  fraudulent.    It  is  The    classes    of    misrepresentation 

safe  to  say  that  courts  have  been  dis-  which  have  been  passed  upon  are  nu- 

posed   to  require   nothing   more    than  merous. 

substantial  truth,  and  to  refuse  to  be  It  has  been  repeatedly  held  that  a 

29 


MOTLEY  V.  DOWNMAN. 


61.  Motley  v.  Downman. 

July  5,  1837.     Lord  Cottenham,  C.  —  3  My.  if  Cr.  1;  6  L.  J.  Ch.  N.  S. 

308. 

THE  plaintiff  having  been  in  the  habit,  while  lessee  of  cer- 
tain works  at  Carmarthen,  of  marking  the  boxes  of  tin  plates 

false  use  of  the  word  "patent" will  dis-     the  manufacturers  of  the  goods  have 


entitle  a  plaintiff  to  relief.  See  Leather 
Cloth  Co.  v.  American  Leather  Cloth 
Co.  223.  On  the  other  hand,  it  has 
been  held  in  a  number  of  instances  that 
the  use  of  the  same  word  as  a  descrip- 
tive designation,  after  the  patent  has 
expired,  is  not  fraudulent.  See  Edel- 
ston  v.  Vick,  119. 

A  misstatement  as  to  the  place  of 
manufacture  of  an  article  is  undoubt- 
edly such  a  misrepresentation  as  will 
defeat  a  suit  in  equity,  and  this  is  often 
true  where  the  misstatement  is  of  the 
simplest  character.  In  Hobbs  v.  Fran- 
cais,  191,  the  use  of  the  word  "London," 
upon  an  article  made  in  New  York, 
was  held  to  be  fatal  to  the  plaintiff's 
suit.  In  Palmer  v.  Harris,  308,  the 
use  of  the  word  "Habana,"  upon  cigars 
manufactured  in  America,  was  made 
the  ground  for  dismissing  the  bill.  In 
Connell  v.  Reed,  673,  a  false  use  of  the 
words  "East  Indian  "  was  held  to  be 
fraudulent. 

There  are,  however,  many  instances 
where  geographical  names  used  in  a 
fictitious  sense  have  been  protected  as 
trade-marks.  The  words  "Persian," 
78,  "  Chinese,"  109,  "  Liverpool,"  400, 
"  Dublin,"  565,  with  others,  have  been 
treated  as  valid,  where  there  was  no 
attempt  to  deceive,  and  the  words  as 
employed  had  not  a  geographical  mean- 
ing. These  cases  do  not  conflict  with 
the  class  of  which  Newman  v.  Alvord, 
282  (which  see),  is  an  illustration  ; 
where  it  is  ruled  that  there  can  be  no 
strictly  exclusive  right  to  use  a  geo- 
graphical word  in  a  geographical  sense. 

Another  line  of  decisions  is  that 
where  the  names  of  persons  other  than 


been  used  upon  the  label.  Of  this  class 
Partridge  v.  Menck,  91,  is  a  leading  il- 
lustration, it  there  appearing  that  the 
plaintiff  omitted  his  own  name  and 
used  that  of  a  person  who  had  formerly 
been  in  his  employ.  The  injunction 
was  refused  chieMy  on  this  ground,  al- 
though the  difference  in  the  labels  was 
not  without  weight.  Similar  decisions 
have  been  made  in  a  number  of  other 
cases;  but  here,  as  in  the  case  of  the 
use  of  the  word  "  patent,"  well-defined 
distinctions  have  been  recognized.  In 
Meridtn  Britannia  Co.  v.  Parker,  supra, 
plaintiff's  mark  was  "Rogers  Bros.  A ;'' 
the  court  treated  the  defence  as  insuffi- 
cient, it  appearing  that  the  words  were 
not  used  with  any  fraudulent  intent, 
and  that  the  manufacture  of  the  com- 
pany's goods  was  superintended  by  two 
brothers  named  Rogers,  who  had  been 
connected  with  the  firm  of  Rogers 
Bros.,  which  firm  had  formerly  used 
the  mark.  In  Dale  v.  Smithson,  195, 
Thomas  Nelson  Dale  used  the  name 
Thomas  Nelson  &  Co.  on  his  labels, 
which  was  held  to  be  an  innocent  use 
that  did  not  prejudice  his  right. 

The  weight  of  authority  is  to  the  ef- 
fect that  the  bond  fide  use  of  the  name 
of  a  predecessor  in  business  as  a  trade' 
mark  is  not  to  be  regarded  as  fraudu- 
lent if  the  plaintiff  is  carrying  on  busi- 
ness at  the  establishment  in  connection 
with  which  the  name  had  been  used. 
In  England  the  rule  is  well  settled 
(Leather  Cloth  Co.  v.  American  Leather 
Cloth  Co.  223) ;  and  in  the  Supreme 
Court  of  the  United  States,  in  Kidd  v. 
Johnson,  669,  the  learned  author  of  the 
opinion,  speaking  of  the  right  of  a 


30 


MOTLEY  V.  DOWNMAN. 


there  made  with  the  letters  "  M.  (7.,"  and  having  afterwards 
removed  his  establishment  forty  miles  off,  where  he  continued 

an  injunction  was  refused  because  plain- 
tiff advertised  his  compound  as  free 
from  all  mineral  and  poisonous  sub- 
stances, whereas  it  contained  an  injur- 
ious mineral.  In  Wolfe  v.  Burke,  434, 
it  was  held  to  be  a  fraud  to  represent 
what  was  substantally  an  alcoholic  be- 
verage as  a  medicine. 

But  in  Dixon  Crucible  Company  T. 
Guggenheim,  331,  a  statement  that  the 
article  was  prepared  from  "  pure  car- 
buret of  iron,"  which  seemed  to  be 
technically  untrue,  was  treated  as  of  no 
moment ;  and  in  Colman  v.  Crump,  579, 
the  Court  of  Appeals  of  New  York  de- 
clined to  attach  any  significance  to  the 
fact  that  the  plaintiffs  had  used  the  same 
designation  upon  mustard  which  con- 
tained a  foreign  substance  as  they  had 
used  upon  mustard  which  was  strictly 
pure.  In  Apollinaris  Co.  v.  Moore,  678, 
it  was  sought  to  defeat  plaintiffs'  right 
to  an  injunction  by  showing  that  it  had 
used  the  word  "  natural "  upon  a  water 
which  it  was  urged  was  artificially  pre- 
pared, but  the  defence  was  held  to  be 
insufficient,  the  court  deciding  that  the 
word  "  natural  "  as  used  was  certainly 
substantially  true. 

From  the  foregoing  and  other  exam- 
ples it  is  not  difficult  to  formulate  the 
conclusion  that,  in  proceedings  in  eq- 
uity, in  the  absence  of  special  condi- 
tions, the  question  of  misrepresentation 
is  always  one  of  fact.  The  principle 
on  which  the  cases  have  been  decided 
has  not  been  departed  from  ;  it  may 
appear  to  have  been  very  differently 
interpreted  ;  but  where  the  plaintiff  has 
failed,  the  controlling  consideration  has 
invariably  been  that  to  sustain  his  mark 
would  be  to  countenance  what  was 
either  substantially  untrue  or  morally 
wrong. 

The  above  discussion  is  to  be  taken 
as  having  relation  to  proceedings  in 
equity  or  such  as  are  tantamount  there- 
to. 


party  to  dispose  of  the  use  of  his  name 
in  connection  with  the  establishment 
where  the  goods  were  made,  said :  "  We 
do  not  think  there  can  be  any  reason- 
able doubt."  So  in  Dixon  Crucible  Co. 
v.  Guggenheim,  331,  the  court  ignored 
the  defence  that  the  words,  "Manufact- 
ured by  Joseph  Dixon  $•  Company,"  had 
been  used  while  the  article  was  made 
by  the  plaintiff  corporation.  A  differ- 
ent rule  may  prevail  where  the  manu- 
facture of  the  goods  has  been  divorced 
from  the  original  establishment.  See 
Carmichael  v.  Latimer,  521. 

The  use  of  the  name  of  a  person,  who 
has  ceased  to  be  connected  with  an  es- 
tablishment in  the  ordinary  transaction 
of  business,  in  such  a  way  as  to  induce 
the  belief  that  his  connection  has  not 
terminated,  will,  however,  usually  be 
treated  as  a  substantial  misrepresenta- 
tion. But  in  Holmes,  frc.  Co.  v.  Holmes, 
Booth  $•  Atwood  Alan.  Co.  340,  a  Con- 
necticut case,  where  a  corporate  name 
was  used  which  imported  that  partners 
who  had  retired  were  still  connected 
with  the  company,  the  court  granted 
an  injunction.  It  is  not  improbable 
that  the  existence  of  state  enactments 
has  been  an  important  factor  in  the  de- 
cision of  some  of  the  American  cases 
in  which  this  question  has  been  consid- 
ered. See  Hegeman  $•  Co.  $-c.  677. 

A  substantial  misrepresentation  of 
the  character  of  the  article  in  connec- 
tion with  which  the  trade-mark  is  used 
is  sufficient  to  prevent  a  recovery.  In 
Estcourt  v.  Estcourt  Hop  Essence  Corn- 
pan;/,  449,  the  court  said  :  "  It  is  im- 
possible not  to  see  that  these  substances 
are  introduced,  recommended,  and  sold 
for  the  purpose  of  enabling  brewers  to 
supply  to  the  public  a  liquid  which 
they  may  represent  to  the  public  as  be- 
ing made  with  pure  hops,  when,  in  fact, 
it  is  not  so  made.  It  is  not  the  prov- 
ince of  the  court  to  protect  speculation 
of  this  kind."  In  Laird  v.  Wilder,  418, 


31 


VICKERY  V.  WELCH. 

to  use  the  same  mark,  the  defendants,  subsequent  lessees  of 
the  Carmarthen  works,  began  to  mark  their  boxes  with  the 
letters  "  M.  G7.,"  and  to  call  themselves  "  The  « M. '.  GV  Tin 
Plate  Company" 

Injunction,  which  had  been  granted  on  motion  by  the  plain- 
tiff, to  restrain  the  defendants  from  the  use  of  the  initials  and 
name,  dissolved,  liberty  being  given  to  bring  an  action,  on  the 
ground  that  there  was  at  least  a  substantial  question  whether 
the  plaintiff  had  not  obtained  the  use  of  the  mark  only  as  a 
tenant  of  the  works  at  Carmarthen,  to  which  locality  it  was 
really  attached,  and  that  in  all  such  cases  the  court  of  equity 
would  not  act  otherwise  than  as  ancillary  to  the  court  of 
law,  the  question  being  one  of  a  legal  right. 


62.  Vickery  v.  Welch. 
October,  1837.     Mass.  Sup.  Ct.—  19  Pick.  523. 

THE  defendant,  having  entered  into  a  bond  with  the  plain- 
tiff to  convey  to  him  his  chocolate  mill,  together  with  his  ex- 
clusive right  or  secret  of  manufacture,  subsequently  declined 
to  communicate  the  secret  to  the  plaintiff,  or  to  covenant  not 
to  communicate  it  to  others. 

Action  of  debt  on  the  bond. 

Held,  that  the  defendant  ought  to  have  conveyed  the  ex- 
clusive right,  with  covenants  to  communicate  the  secret  to  the 
plaintiff,  and  not  to  others,  and  that  the  defendant's  refusal 
had  constituted  a  breach  of  the  bond. 

"  It  was  contended  for  the  defendant  that  this  obligation  was  void 
as  being  in  restraint  of  trade.  But  we  cannot  suppose  that  the  case 
comes  within  that  doctrine.  The  defendant  claims  to  operate  by  a 
secret  art.  The  public  are  not  prejudiced  by  the  transfer  of  it  to  the 
plaintiff.  If  it  were  worth  anything,  the  defendant  would  use  the  art 
and  keep  it  secret ;  and  it  is  of  no  consequence  to  the  public  whether 
the  secret  art  be  used  by  the  plaintiff  or  by  the  defendant." 

32 


DOUGHERTY  v.  VAN  NOSTRAND. 

63.  Millington  v.  Fox. 
March  24,  1838.     Lord  Cottenham,  C.  —  3  My.  §•  Cr.  338. 

THE  plaintiffs  and  their  predecessors  in  business  having  for 
many  years  carried  on  business  as  manufacturers  of  steel,  which 
they  stamped  with  the  names  and  letters  "  Crowley"  "  Crow- 
ley  Millington"  "  J.  H."  the  defendants  marked  other  steel 
with  the  same  marks  and  sold  it  so  marked. 

Injunction  granted  to  restrain  the  defendants  from  contin- 
uing to  use  those  marks,  though  they  had  acted  without  any 
fraudulent  intention  :  but  Held,  that  no  costs  could  be  given, 
since  the  plaintiffs  had  persevered  with  the  suit  after  the  de- 
fendants had  offered  to  give  them  all  to  which  they  were  en- 
titled. 

"  I  see  no  reason  to  believe  that  there  has,  in  this  case,  been  a 
fraudulent  use  of  the  plaintiffs'  marks.  It  is  positively  denied  by 
the  answer,  and  there  is  no  evidence  to  show  that  the  defendants 
were  even  aware  of  the  existence  of  the  plaintiffs  as  a  company  man- 
ufacturing steel In  short,  it  does  not  appear  to  me  that 

there  was  any  fraudulent  intention  in  the  use  of  the  marks.  That 
circumstance,  however,  does  not  deprive  the  plaintiffs  of  their  right 
to  the  exclusive  use  of  those  names." 

64.  Dougherty  v.  Van  Nostrand. 
July  15,  1839.     N.  Y.  Chancery:  Hoffman,  A.  V.  C.  —  Hoff.  68. 

PARTNERSHIP  suit.  Held,  that  the  good-will  of  the  business 
and  lease  of  the  partnership  premises  did  not  survive  to  the 
surviving  partners,  but  were  partnership  property. 

"  Upon  a  sale  of  the  lease  of  trading  premises,  the  good-will  of 
course  enters  into  the  value  of  the  lease,  and  enhances  the  purchase 
money.  In  truth,  in  a  lease  of  a  trading  establishment  it  constitutes 
a  large  part  of  the  value." 

3  33 


SEELEY  V.  FISHER. 

65.  Bell  v.  Locke. 
January,  1840.    N.  Y.  Chancery:  Walworth,  C.  —  8 Paige,  75  ;  7?.  Cox,  11. 

THE  plaintiffs  being  the  proprietors  and  publishers  of  a 
newspaper  called  The  Democratic  Republican  New  Era,  the 
defendant  began  to  publish  another  paper  under  the  name 
of  The  New  Era. 

Injunction  to  restrain  the  defendant  from  publishing  his 
newspaper  under  that  name  refused,  on  the  ground  that 
there  was  no  real  probability  of  deception.1 


66.  Whittaker  v.  Howe. 
January  18,  1841.     Lord  Langdale,  M.  R.  —  3  Beav.  383. 

THE  defendant,  a  solicitor,  having  sold  his  practice  to  the 
plaintiff,  and  agreed  not  to  practise  as  a  solicitor  in  Great 
Britain  for  twenty  years,  nevertheless  continued  to  practise 
as  such. 

On  motion  by  the  plaintiff,  Held,  that  the  agreement  was 
not  invalid,  and  that  an  injunction  must  be  granted  to  re- 
strain the  defendant  from  practising  in  any  part  of  Great 
Britain,  and  from  endeavoring  to  induce  the  clients  of  the 
firm  to  cease  to  employ  the  firm. 

67.  Seeley  v.  Fisher. 
February  5,  1841.     Lord  Cottenham,  C.  —  ll  Sim.  581  ;  10  L.  J.  Ch.  N. 

S.  274  ;  21  Leg.  Obs.  474. 

THE  plaintiff  being  the  owner  of  the  copyright  of  Mr. 
Scott's  Commentary  on  the  Bible,  and  having  brought  out  a 
fifth  edition  of  the  work,  after  the  author's  death,  with  his 
last  improvements  and  corrections,  the  defendants  reprinted 
the  fourth  edition,  and  in  their  advertisements  reflected  on 
the  plaintiff's  work  as  not  containing  the  work  of  the  author 
while  still  vigorous. 

Injunction,  which   had   been    granted  on    motion   by  the 
1   See  Hogg  v.  Kirby,  10. 

34 


MORISON  V.  SALMON. 

plaintiff,  dissolved,  on  the  ground  that  the  statements  made 
by  the  defendants  did  not  represent  their  work  to  contain 
any  matter  which  was  the  plaintiff's  exclusive  property, 
under  his  copyright,  and  that,  so  far  as  they  disparaged  the 
plaintiff's  work  they  merely  amounted,  if  untrue,  to  a  libel, 
for  which  the  proper  remedy  was  an  action  at  law.1 


68.    Morison  v.  Salmon. 

January  14,  30,  1841.     Common  Pleas.  —  2  Man.  §•  G.  385  ;    2  Scott  N. 
R.  449  ;  10  L.  J.  C.  P.  91. 

THE  plaintiffs  being  the  proprietors  and  compounders  of 
"  Morison 's  Universal  Medicines,"  which  they  sold  in  boxes, 
inclosed  in  wrappers  bearing  those  words,  the  defendants 
sold  other  medicines  in  similar  wrappers. 

Action  on  the  case. 

A  verdict  having  been  found  for  the  plaintiff,  with  one  far- 
thing damages,  and  the  judge  having  certified  for  costs  : 

On  motion  for  a  new  trial,  Held,  (1.)  that  the  allegation 
that  the  defendant  had  used  wrappers  similar  to  those  used 
by  the  plaintiffs,  for  the  purpose  of  causing  his  medicines  to 
be  mistaken  for  the  plaintiffs',  disclosed  a  sufficient  cause  of 
action  ;  (2.)  and  that,  inasmuch  as  a  right  was  in  question, 
the  judge  had  power  at  the  trial  to  certify  for  costs,  although 
the  jury  gave  only  one  farthing  damages. 

Per  Erskine,  J.  "  The  ground  of  action  is  not  that  the  defendant 
prepared  and  sold  medicine  in  imitation  of  '  Morison's  Universal 
Medicine,'  but  that  he  prepared  and  sold  it  under  a  false  represen- 
tation that  it  wast  he  article  prepared  and  sold  by  the  plaintiffs, 
whereby  the  plaintiffs  were  prevented  from  selling  large  quantities  of 
their  medicine.  This  is  a  good  cause  of  action." 

Per  Maule,  J.  "  The  right  is  of  a  well-known  description.  It  is 
not  a  general  right  to  carry  on  a  particular  trade,  but  a  right  to  pro- 
tection which  a  party  has  who  uses  certain  marks,  and  to  the  use  of 
which  he  may  have  as  good  a  right  as  though  he  were  a  patentee."  a 

1  See  Lord  Byron  v.  Johnston,  23.  2  See  Burnett  v.  Phalon,  277. 

35 


WILLETT  V.  BL  AN  FORD. 


69.   Ex  parte  Thomas. 

July  21,  1841.     Court  of  Review  in  Bankruptcy :  Sir  J.  Cross  —  2  Mont., 
D.  §•  De  G.  294  ;  10  L.  J.  Bank'cy,  75;  5  Jur.  967. 

ON  petition  in  the  bankruptcy  of  hotel  keepers  : 
Held,  that  the  good- will  of  a  bankrupt's  trade,  so  far  as  it 
was  personal,  remained  with  the  bankrupt ;  so  far  as  it  was 
local,  passed  to  the  assignees  in  bankruptcy  ;  and  that,  in  the 
case  in  question,  owing  to  the  special  circumstances,  the  as- 
signees had  not  acquired  any  interest  in  the  good-will. 

"  It  is  easy  to  conceive  there  to  be  such  a  thing  as  local  good-will, 
arising  from  the  habit  which  customers  have  been  in  of  frequenting 
the  same  place.  There  is  another  kind  of  good- will  which  may  be 
called  personal,  and  this  has  been  said  to  be  incapable  of  sale.  But 
there  may  be  a  good-will,  like  that  in  the  present  case,  which  is  partly 
personal  and  partly  local." 


70.  Willett  v.  Blanford. 

January  12,  1842.      Wigram,  V.  C.  —  1  Hare,  253;  11  L.  J.  Ch.  182; 

6  Jur.  274. 

PARTNERSHIP  suit.  Held,  that  in  ascertaining  the  inter- 
est to  which  the  estate  of  a  deceased  partner  was  entitled  in 
the  profits  of  the  business  after  his  death,  his  capital  not  hav- 
ing been  taken  out,  a  variety  of  considerations  must  be  re- 
garded ;  but  that  where  the  business  consisted  substantially 
of  good- will,  the  interest  would  usually  be  determined  by  the 
shares  in  the  business. 

P.  270.  "  The  whole,  or  the  substantial  part,  of  a  trade  may  con- 
sist in  good-will,  leading  to  renewals  of  contracts  with  old  connections. 
In  such  a  case  it  is  the  identical  source  of  profit  which  operates  both 
before  and  after  dissolution ;  and  this  appears  to  me  to  be  the  ground- 
work of  Lord  Eldon's  reasoning  in  Cook  v.  Collingridge." 

36 


CRAWSHAY  V.  THOMPSON. 

71.  Thornbury  v.  Bevill. 
May  2,  1842.     Kniyht  Bruce,  V.  C.  —  1  Y.  if  C.  Ch.  554;  6  Jur.  407. 

SPECIFIC  performance  of  an  agreement  between  two  so- 
licitors refused,  on  the  ground  of  want  of  acceptance  by  the 
plaintiff. 

P.  564.  "  This  is  not  quite  a  case  of  dissolution  of  partnership, 
but  something  between  a  dissolution  of  the  partnership  and  a  pur- 
chase of  the  business  ;  and  notwithstanding  the  case  of  Sunn  v.  Guy, 
from  which  I  do  not  mean  to  express  dissent,  decided  as  it  was  by 
judges  of  high  authority,  I  am  not  prepared  to  say  that  it  is  fit  that 
a  court  of  equity  should  enforce  an  agreement  between  two  solic- 
itors, that  one  on  retiring  from  the  business  shall  permit  the  other 
to  carry  on  business  in  his  name.  Whether  such  an  agreement  be  or 
be  not  within  the  strict  policy  of  the  law,  it  may  be  doubtful  whether 
this  court  ought  to  assist  it." 

72.  Crawshay  v.  Thompson. 

May  26,  1842.     Common  Pleas.  —  4  Man.  if  G.  357  ;  5  Scott  N.  R.  562  ; 
11  L.  J.  C.  P.  301. 

THE  plaintiff,  an  iron-master,  marking  his  iron  with  the 
letters  "  W.  C"  in  an  oval,  the  defendants,  also  iron-masters 
and  merchants,  sold  other  iron  marked  with  the  letters  "  W. 
0."  in  an  oval. 

Action  on  the  case. 

A  'verdict  having  been  found  for  the  defendants,  on  motion 
for  a  new  trial : 

Held,  (1.)  that  it  was  necessary  for  the  plaintiff  to  prove 
fraudulent  intention,  and  that  the  only  evidence  of  this  being 
the  alleged  resemblance,  it  had  been  properly  left  to  the  jury 
to  say,  first,  whether  there  was  such  a  resemblance  as  to  de- 
ceive an  ordinary  purchaser,  and  injure  the  plaintiff,  and  sec- 
ond, whether  there  was  fraudulent  intention  on  the  part  of 
the  defendants  ;  (2.)  that  notice  which  had  been  given  to  the 
defendants  by  the  plaintiff,  that  they  were  using  a  mark  cal- 
culated to  deceive,  was  evidence  for  the  jury  to  consider  with 

37 


PERRY  V.  TRUEFITT. 

regard  to  the  defendants'  intention,  but  could  not  of  itself 
alter  the  legal  rights  of  the  parties,  since  it  only  informed  the 
defendants  of  what  was  the  plaintiff's  opinion.1 

73.  Perry  v.  Truefitt. 
December  9,  1842.     Lord  Langdale,  M.  R.  —  6  Beav.  66;  1  L.  T.  384. 

THE  plaintiff  being  the  compounder  of  "  Perry's  Medicated 
Mexican  Balm"  the  defendant  began  to  make  up  and  sell 
another  compound  under  the  name  of  "  Truefitt? a  Medicated 
Mexican  Balm." 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendant  from  infringing  his  rights  refused,  with  liberty  to 
the  plaintiff  to  bring  an  action,  on  the  ground  of  misrepre- 
sentations contained  in  the  plaintiff's  show-cards  as  to  the 
origin  and  substance  of  his  composition. 

"I  think  that  the  principle  on  which  both  the  courts  of  law  and 
of  equity  proceed,  in  granting  relief  and  protection  in  cases  of  this 
sort  is  very  well  understood.  A  man  is  not  to  sell  his  own  goods 
under  the  pretence  that  they  are  the  goods  of  another  man  ;  he  can- 
not be  permitted  to  practise  such  a  deception,  nor  to  use  the  means 
which  contribute  to  that  end.  He  cannot,  therefore,  be  aljowed  to 
use  names,  marks,  letters,  or  other  indicia,  by  which  he  may  induce 
purchasers  to  believe  that  the  goods  which  he  is  selling  are  the  man- 
ufacture of  another  person.  I  own  it  does  not  seem  to  me  that  a  man 
can  acquire  a  property  merely  in  a  name  or  mark  ;  but  whether 
he  has  or  not  a  property  in  the  name  or  the  mark,  I  have  no  doubt 

1  The  importance  of  bearing  in  mind  empted  from   damages  and   costs,  the 

the  substantial   difference  between   a  continuance  of  the  use  may  be  justly 

suit  in  equity  and  an  action  at  law  is  restrained,  since  it  involves  a  violation 

made  apparent  by  this  case.  of  a  right  of  property  that,  if  persisted 

In  an  action  at  law  it  is,  probably,  in,  with  a  knowledge  of  the  fact,  would 

essential  to  prove  an  intent  to  deceive  ;  be  fraudulent."     Duer,  J.,  in  Amoskeag 

in   a  suit  in  equity,  whatever  may  be  Co.  v.  Spear,  100. 

true  of  the  earlier  cases,  it  is  now  set-  This  view  has  long  been  accepted 
tied  that  the  intent  is  of  no  moment  as  as  incontestable  ;  if  a  trade-mark  is 
affecting  the  right  to  an  injunction,  property,  it  is  plain  that  the  fact  that 
"Even  where  no  fraud  can  be  justly  the  defendant  did  not  know  of  plain- 
imputed,  where  the  use  of  the  name  or  tiff's  ownership  is  immaterial,  except 
style  originated  in  mistake,  and  not  in  as  affecting  the  question  of  damages, 
design,  although  the  party  may  be  ex- 

38 


ENGLAND  V.  CURLING. 

that  another  person  has  not  a  right  to  use  that  name  or  mark  for  the 
purposes  of  deception,  and  in  order  to  attract  to  himself  that  course 
of  trade,  or  that  custom  which,  without  that  improper  act,  would  have 
flowed  to  the  person  who  first  used,  or  was  alone  in  the  habit  of  using, 
the  particular  name  or  mark." 1 


.    74.  England  v.  Downs. 

December  17,  1842.    Lord  Langclale,  M.  R.  —  6  Beav.  269  ;  12  L.  J.  Ch. 
85  ;  6  Jur.  1075. 

THE  widow  of  a  licensed  victualler,  who  was  carrying  on 
the  business,  assigned  her  household  goods,  stock  in  trade, 
etc.,  prior  to  a  second  marriage,  to  trustees,  upon  trusts  for 
herself  and  her  daughters,  excluding  the  second  husband. 

Suit  by  the  daughters,  after  their  mother's  death,  for  the 
execution  of  the  trusts  of  the  settlement. 

Held,  that,  under  the  circumstances  of  the  case,  the  good- 
will passed  to  the  trustees  of  the  deed,  and  not  to  the  hus- 
band ;  as  being  incident  to  the  stock  and  license,  and  not  to 
the  premises  on  which  the  business  was  carried  on. 

"This,  in  one  way  of  looking  at  it,  is  the  good-will.  It  is  the 
chance  or  probability  that  custom  will  be  had  at  a  certain  place  of 
business,  in  consequence  of  the  way  in  which  that  business  has  been 
previously  carried  on." 

75.  England  v.  Curling. 
July  20,  1843  ;  July  15,  1844.    Lord  Langdale,  M.  R.—8  Beav.  129. 

PARTNERSHIP  suit. 

Injunction  granted  to  restrain  the  defendant  Curling,  be- 
tween whom,  the  plaintiff,  and  another,  there  was  a  subsisting 
agreement  for  a  partnership  for  a  certain  term,  from  carrying 
on  business  with  the  other  defendants  under  the  old  firm 
name  of  "  Goodwin,  Curling  $•  Co.,"  and  from  opening  let- 
ters, etc.,  addressed  to  or  intended  for  the  old  firm,  and  from 
publishing  notices  of  the  dissolution  of  the  existing  partner- 
ship until  the  expiration  of  the  term  for  which  it  was  to  last. 

1  See  Pidding  v.  How,  60. 

39 


CROFT  v.  DAY. 

76.  Croft  v.  Day.    (1.) 
December  18,1843.     Lord  Larigdale,  M.  R.  —  7  Beav.  84. 

THE  plaintiffs  being  the  executors  of  the  surviving  partner 
in  the  firm  of  "  Day  £  Martin,"  of  97  High  Holborn,  black- 
ing manufacturers,  who  sold  their  blacking  in  bottles  labelled 
with  the  name  and  address  of  the  firm,  the  defendant  ob- 
tained the  authority  of  a  man  named  Martin  to  use  his  name, 
and  began  to  sell  blacking  in  bottles  labelled  with  the  name 
and  address  "Day  $  Martin,  90£  Holborn  Hill"  in  imita- 
tion of  the  genuine  labels. 

On  motion  by  the  plaintiffs,  injunction  granted' to  restrain 
the  defendant  from  using  labels  or  show-cards  calculated  to 
produce  deception. 

"  It  has  been  very  correctly  said  that  the  principle  in  these  cases 
is  this  —  that  no  man  has  a  right  to  sell  his  own  goods  as  the  goods 
of  another.  You  may  express  the  same  principle  in  a  different  form, 
and  say  that  no  man  has  a  right  to  dress  himself  in  colors,  or  adopt 
and  bear  symbols,  to  which  he  has  no  peculiar  or  exclusive  right,  and 
thereby  personate  another  person,  for  the  purpose  of  inducing  the 
public  to  suppose,  either  that  he  is  that  other  person,  or  that  he  is 
connected  with  and  selling  the  manufacture  of  such  other  person, 
while  he  is  really  selling  his  own.  It  is  perfectly  manifest  that  to  do 
these  things  is  to  commit  a  fraud,  and  a  very  gross  fraud. 

"  It  is  perfectly  manifest  that  two  things  are  required  for  the  ac- 
complishment of  a  fraud  such  as  is  here  contemplated.  First,  there 
must  be  such  a  general  resemblance  of  the  forms,  words,  symbols,  and 
accompaniments  as  to  mislead  the  public ;  and,  secondly,  a  sufficient 
distinctive  individuality  must  be  preserved,  so  as  to  procure  for  the 
person  himself  the  benefit  of  that  deception  which  the  general  re- 
semblance is  calculated  to  produce.  To  have  a  copy  of  the  thing 
would  not  do ;  for  though  it  might  mislead  the  public  in  one  respect, 
it  would  lead  them  back  to  the  place  where  they  were  to  get  the  gen- 
uine article,  an  imitation  of  which  is  improperly  sought  to  be  sold. 
For  the  accomplishment  of  such  a  fraud  it  is  necessary,  in  the  first 
instance,  to  mislead  the  public ;  and  in  the  next  place,  to  secure  a 

40 


TAYLOR  V.  CARPENTER. 


benefit  to  the  party  practising  the  deception,  by  preserving  his  own 
individuality."  1 


77.  Croft  v.  Day.  (2.) 
July,  1844.    Lord  Lanydale,  M.  R.  —  28  Leg.  Obs.  378. 

ON  motion  to  commit  the  defendant  in  Croft  v.  Day  (1) 
for  breach  of  the  injunction,  it  appearing  that  the  plain- 
tiffs had  taken  no  notice  of  a  form  of  label  suggested  by  the 
defendant,  which  he  proposed  to  adopt  in  place  of  the  one 
against  the  use  of  which  the  injunction  had  been  granted, 
and  the  plaintiffs  alleging  that  the  suggested  alterations  were 
merely  colorable : 

Held,  that  if  the  defendant  was  willing  to  make  a  proper 
distinction,  and  the  plaintiffs  refused  to  attend  to  his  propo- 
sal, the  court  itself  would  determine  whether  the  proposed 
distinction  was  sufficient. 


78.  Taylor  v.  Carpenter.  (1.) 

October,  1844.     U.  S.  C.  C.  Dt.  of  Mass. :  Story  and  Spragiie,  JJ.  — 
3  Story,  458  ;  R.  Cox,  14. 

THE  plaintiffs  being  English  manufacturers  of  thread, 
which  they  sold  on  spools  labelled  on  the  top  with  the  words 
"  Taylor's  Persian  Thread"  and  on  the  bottom  with  the 
name  "  J.  $•  W.  Taylor,  Leicester,"  the  defendant,  an  Ameri- 
can citizen,  made  up  similar  spools  of  inferior  thread  and  sold 
them  similarly  labelled. 

Injunction  granted  to  restrain  the  defendant  from  infring- 
ing the  plaintiffs'  rights,  notwithstanding  their  alienage. 

Per  Story,  J.  "  It  is  suggested  that  the  plaintiffs  are  aliens.  Be 
it  so.  But  in  the  courts  of  the  United  States,  under  the  Constitution 
and  laws,  they  are  entitled,  being  alien  friends,  to  the  same  protection 
of  their  rights  as  citizens.  There  is  no  pretence  to  say  that  if  a  sim- 
ilar false  imitation  and  use  of  the  labels  of  a  citizen,  put  upon  his 
own  manufactured  articles,  had  been  designedly  and  fraudulently  per- 
petrated and  acted  upon,  it  would  not  have  been  an  invasion  of  his 
1  See  Knott  v.  Morgan,  57 ;  Williams  v.  Johnson,  150. 

41 


HINE  v.  LART. 

rights,  for  which  our  law  would  have  granted  ample  redress.  There 
is  no  difference  between  the  cases  of  a  citizen  and  that  of  an  alien 
friend,  where  his  rights  are  openly  violated."  l 

79.  Coats  v.  Holbrook. 

July,  1845.     N.    Y.   Chancery:  Sandford,  A.  V.  C.  —  2Sandf.   Ch.  586; 
3  N.  Y.  Leg.  Obs.  404;  R.  Cox,  20. 

THE  plaintiffs  being  Scotch  thread  manufacturers,  who  sold 
their  thread  on  spools  labelled  (among  other  things)  with  the 
words  "J".  £  P.  Coats'  Best  Six  Cord,'"  the  defendants,  Amer- 
ican commission  merchants,  made  up  inferior  thread  in  a  sim- 
ilar manner  and  similarly  labelled. 

Suit  for  an  injunction. 

Held,  (1.)  that  the  conduct  of  the  defendants  was  intended 
and  calculated  to  deceive  ;  (2.)  that  the  fact  that  the  plaintiffs 
were  aliens  did  not  deprive  them  of  their  right  to  an  injunc- 
tion ;  (3.)  that  it  was  no  defence  to  say  that  the  purchasers 
from  the  defendants  were  informed  that  their  article  was  spu- 
rious, since  the  statement  did  not  pass  to  subsequent  purchas- 
ers ;  (4.)  that  the  injunction  must,  therefore,  be  granted  ;  (5.) 
that  with  respect  to  the  costs  up  to  bill  filed,  the  defendants 
must  pay  them,  there  being  no  necessity  for  the  plaintiffs  to 
have  given  them  notice  before  filing  their  bill,  and  that  the 
defendants  must  also  pay  the  subsequent  costs,  an  offer  of 
submission  by  them  having  been  imperfect. 

8O.  Hine  v.  Lart. 
January  12,  1846.     Shadwell,  V.  C.  ofE.  —  WJur.  106;  7  L.  T.  41. 

THE  plaintiffs  being  hosiers,  who  sold  a  special  kind  of 
black  stockings  made  on  purpose  for  them,  and  marked  with 
the  word  "Ethiopian"  and  six  white  lines,  the  defendants, 
also  hosiers,  began  to  sell  stockings  similarly  marked. 

Motion  to  dissolve  an  injunct.on  which  had  been  granted 

1  The  language  of  Judge  Story  in     sented  with  a  knowledge  that  it   had 
this  case  had  the  effect  of   setting  at     no  foundation  in  reason  or  authority, 
rest  a  defence  which  was  probably  pre- 

42 


RODGERS  v.  NOWILL. 

to  restrain  the  infringement  of  the  plaintiffs'  marks  refused  ; 
and  Held,  that  although  persons  other  than  the  plaintiffs,  viz. 
the  personal  representatives  of  a  deceased  partner  in  the  plain- 
tiffs' firm,  might  have  some  interest  in  the  marks,  yet  the 
plaintiffs  had  a  sufficient  interest  in  them  to  be  entitled  to 
sue. 


81.  Pierce  v.  Pranks. 
January  13,  1846.     Knight  Bruce,  V.  C.  —  15  L.  J.  Ch.  122;  10  Jur.  25. 

THE  plaintiff  dealing  in  certain  kinds  of  brushes,  which  he 
stamped  with  the  name  and  address,  "Smyth's,  Bond  Street" 
the  defendant  sold  other  brushes  similarly  marked. 

Suit  for  an  injunction. 

Held,  (1.)  that  the  injunction  must  be  granted  ;  (2.)  that 
the  plaintiff  had  not  exceeded  his  right  in  filing  his  bill  with- 
out previous  communication  with  the  defendant,  and  that  the 
plaintiff  was  entitled  to  the  costs  of  the  suit,  notwithstanding 
that  the  defendant  said  he  would  have  submitted  if  applica- 
tion had  been  made  to  him  ;  (3.)  but  that  the  defendant  was 
entitled  to  whatever  costs  were  occasioned  by  a  particular  un- 
founded allegation  in  the  bill  as  to  private  marks. 

82.  Rodgers  v.  Nowill. 

June  30,  1846;  November  2,  1847;  December  9,  1847.  Wigram,  V.  C. — 
6  Hare,  325.  Common  Pleas.  —  5  C.  B.  109 ;  1 7  L.  J.  C.  P.  52  ;  11  Jur. 
1039  ;  10  L.  T.  88. 

THE  plaintiffs  being  cutlers,  who  stamped  their  cutlery 
with  the  name  "  J.  Rodgers  $•  Sons,"  with  a  crown  and  "  F". 
R"  the  defendants  began  to  sell  cutlery  stamped  with  the 
same  marks  and  the  word  "  Sheffield." 

Suit  for  an  injunction.  Held,  that  the  bill  must  be  retained 
for  a  year,  leave  being  given  to  bring  an  action,  the  defend- 
ants claiming  the  name  as  their  own  firm  name. 

Action  on  the  case.  A  verdict  having  been  found  for  the 
plaintiffs,  with  forty  shillings  damages,  on  motion  for  a  new. 

trial : 

43 


TAYLOR  v.  CARPENTER. 

Held,  that  the  judge  at  the  trial  was  right  in  directing  the 
jury  that  the  action  was  brought  to  try  a  right,  and  not  to 
recover  substantial  damages,  and  also  in  leaving  to  them  the 
following  questions  :  (1.)  Whether  the  mark  as  used  by 
the  defendants  was  calculated  to  deceive  ordinary  persons  ; 
(2.)  whether  they  had  adopted  the  particular  form  of  deceit 
charged  ;  (3.)  whether  they  had  acted  with  fraudulent  inten- 
tion ;  and  that  no  allegation  of  special  damage  was  required, 
and  that  the  motion  for  a  new  trial  must  be  refused. 

On  motion  by  the  plaintiffs,  injunction  granted  to  restrain 
further  infringements,  with  the  costs  of  the  proceedings  at 
law  and  in  equity,  except  the  costs  of  the  evidence  in  equity. 


83.  Taylor  v.  Carpenter.     (2.) 

October,  1846.     U.  S.  C.  C.  Dl.  of  Mass. :  Woodbury  and  Sprague,  JJ.  — 
2  Wood,  fr  M.  1;  R.  Cox,  82  ;  9  L.  T.  514. 

THE  plaintiffs,  an  English  firm  of  thread  manufacturers, 
marking  their  thread  in  a  special  manner,  the  defendant,  an 
American  citizen,  sold  other  thread  marked  in  imitation  of 
the  plaintiffs'. 

Action  on  the  case.  A  verdict  having  been  returned  for 
the  plaintiffs,  with  substantial  damages,  on  motion  for  a  new 
trial : 

Held,  (1.)  that  the  existence  of  a  foreign  custom  to  infringe 
American  trade-marks,  if  established,  would  not  debar  an 
American  court  from  protecting  foreign  trade-marks ;  (2.) 
that  it  was  no  defence  that  the  defendant's  goods  were  equal 
in  quality  to  the  plaintiffs' ;  (3.)  that  it  was  no  defence  for 
the  defendant  to  say  that  he  had  informed  the  immediate 
purchasers  that  the  mark  on  the  goods  was  not  genuine  ;  (4.) 
that  it  was  no  defence  to  plead  that  the  plaintiffs  had  delayed, 
unless  the  delay  amounted  to  a  license  to  use  the  marks,  or  an 
abandonment  to  the  public  ;  (5.)  that  actual  damage  having 
been  suffered  by  loss  of  sales  by  the  plaintiffs,  they  were  en- 
titled to  recover  more  than  nominal  damages  ;  (6.)  but  that 

44 


TAYLOR  V.  CARPENTER. 


exemplary  damages  should  not  be  given  in  an  action  for  in- 
fringement of  trade-mark.1 


84.  Taylor  v.  Carpenter.    (3.) 

December,  1846.     N.   Y.  Chancery:  Sandford,  C.     N.  Y.  Ct.  of  Errors. 
—  2  Sandf.  Ch.  603;  11  Paige,  292;  R.  Cox,  45. 

THE  defendant,  an  American  citizen,  sold  spurious  thread 
in  America  labelled  with  the  same  marks  as  those  used  by 
the  plaintiffs,  English  thread  manufacturers,  on  their  "  Taylor's 
Persian  Thread." 

Injunction  to  restrain  the  defendant's  infringement  granted 
and  affirmed. 

And  Held,  (1.)  that  the  trade-mark  of  an  alien  would  be 
protected  in  the  American  courts ;  (2.)  that  the  quality  of 
the  thread  on  which  the  spurious  marks  were  placed  was 
immaterial;  (3.)  that  it  was  no  defence  for  the  defendant  to 
say  that  he  had  informed  the  immediate  purchaser  that  the 
marks  were  spurious. 

Per  Lott,  Senator.  "  The  object  of  the  complainants'  bill  is  to 
prevent  the  commission  of  a  fraud,  not  only  on  them  and  to  the  prej- 
udice of  their  rights,  but  on  the  public,  by  the  sale  of  an  article  with 
an  imitation  of  their  trade-mark  thereon,  in  such  a  manner  as  to 
deceive  purchasers,  and  through  the  false  representations  thus  held 
out  to  deprive  the  owners  thereof  of  the  profits  of  their  skill  and 
enterprise." 

Per  Spencer,  Senator.  "  The  right  claimed  by  the  complainants 
does  not  partake  in  any  considerable,  if  in  any  degree,  of  the  nature 

and  character  of  a  patent  or  copyright The  defendant  is  at  full 

liberty  to  manufacture  and  vend  the  same  kind  of  thread  to  any  ex- 
tent he  pleases,  and  whenever  he  chooses.  He  is  only  required  to 

depend  for  success  upon  his  own  character  and  fame He  is  only 

required  not  to  pirate  upon  the  rights  of  others." 

1  See  McLean  v.  Fkming,  580. 

45 


ROUTH  V.  WEBSTER. 

85.  Spottiswoode  v.  Clarke. 

December  11,  1846.     Lord  Cottenham,  C.  —  2  Ph.   154;  1   Coop.  254;  10 
Jur.  1043;  8  L.  T.  230-271. 

THE  plaintiff  being  the  proprietor  and  publisher  of  "  The 
Pictorial  Almanack"  the  defendant  published  another  alma- 
nac in  a  very  similar  wrapper,  under  the  name  of  "  Old 
Moore's  Pictorial  Almanack" 

Injunction,  which  had  been  granted  by  the  V.  C.  of  E.  to 
restrain  the  defendant  from  the  publication  of  his  almanac, 
dissolved,  the  defendant  keeping  an  account,  and  the  plain- 
tiff having  liberty  to  bring  an  action,  on  the  ground  that  the 
court  was  dealing  with  a  legal  right,  and  that  the  conse- 
quences of  an  erroneous  view  of  the  legal  right  would  be  very 
serious  to  the  defendant.1 

1  Coop.  264.       The  possibility  of  acquiring  an  exclusive  right  in 
a  general  word,  such  as  "  Pictorial,"  "  Illustrated,"  denied. 

2  Ph.  157.      "Take  a  piece  of  steel:  the  mark  of  the  manufact- 
urer from  whom  it  comes  is  the  only  indication  to  the  eye  of  the  cus- 
tomer of  the  quality  of  the  article.     So  it  is  of  blacking,  or  any  other 
article  of  manufacture,  the  particular  quality  of  which  is  not  discern- 
ible by  the  eye.     But  these  cases  are  quite  different  from  the  present 
case,  in  which,  if  you  are  deceived  at  all,  it  is  not  by  the  eye." 


86.  Routh  v.  Webster. 

January  28,  1847.     Lord  Langdale,  M.  R.  — 10  Beav.  561;  11  Jur.  701; 

9  L.  T.  491. 

THE  defendants,  being  the  provisional  directors  of  a  joint 
stock  company  called  "  The  Economic  Conveyance  Company" 
published  a  prospectus  in  which  the  plaintiff's  name  appeared 
as  a  trustee  of  the  company,  without  his  authority. 

On  motion  by  the  plaintiff,  injunction  granted  to  restrain 
the  defendants  from  using  the  plaintiff's  name,  without  his 
authority,  in  their  prospectus,  or  so  as  to  identify  him  with 
the  company. 

1  See  Hogg  v.  Kirby,  10. 

46 


LONDON,  ETC.,  ASSURANCE  SOCIETY  v.  LIFE  ASSURANCE  CO. 

87.  Franks  v.  Weaver. 
March  10,  1847.     Lord  Langdale,  M.  R.  —  10  Beav.  297;  8  L.  T.  510. 

THE  plaintiff  being  the  inventor  and  compounder  of 
"  Franks'  Specific  Solution  of  Copaiba"  which  he  sold  in 
wrappers  containing  that  title,  directions  for  use,  testimonials, 
etc.,  the  defendant  began  to  sell  another  preparation,  which 
he  called  "  Chemical  Solution  of  Copaiba"  and  placed  in 
wrappers  in  which  he  made  use  of  the  plaintiff's  name  and 
testimonials  in  such  a  manner  as  to  lead,  primd  facie,  to  the 
belief  that  they  were  applicable  to  the  defendant's  preparation, 
though  on  a  close  examination  it  appeared  that  they  were  used 
by  him  in  praise  of  the  genuine  article,  with  which  his  own 
was  compared. 

On  motion  by  the  plaintiff,  injunction  granted  to  restrain 
the  defendant  from  acting  so  as  to  deceive. 

88.  The  London  and  Provincial  Law  Assurance  Society 
v.  The  London  and  Provincial  Joint  Stock  Life  Assur- 
ance Company. 

November  y,  1847.     Shad  well,   V.  C.  of  E.  —  17  L.  J.  Ch.  37;  11  Jur. 
938;  10  L.  T.  127. 

MOTION  for  an  injunction  to  restrain  the  defendants  from 
using  the  first  three  words  of  the  title  of  their  company  re- 
fused, and  an  action  directed  to  be  brought,  on  the  ground 
that  no  deception  or  damage  was  probable,  and  that  there  was 
a  doubt  as  to  a  sufficient  length  of  user  by  the  plaintiffs. 

"  The  principles,  I  apprehend,  are  clear,  that  the  court  will  always 
have  regard  to  this,  whether  there  has  been  such  an  exclusive  right 
to  a  name  on  the  part  of  the  plaintiffs  as  to  justify  the  court  in  inter- 
fering in  a  summary  way  against  the  defendants ;  and  the  court  will 
consider  whether,  takiug  all  the  names  together,  it  is  or  is  not  ap- 
parent that  there  is  such  a  deceptive  quality  as  is  likely  to  produce 
the  injury  complained  of." 

47 


PARTRIDGE  V.  MENCK. 

89.  Guinness  v.  Ullmer. 
November  11,  1847.     Shadwell,  V.  C.ofE.  —  lO  L.  T.  127. 

THE  plaintiffs  being  porter  brewers  at  Dublin,  the  defend- 
ants, who  were  engravers,  engraved  blocks  or  plates  in  imita- 
tion of  those  from  which  the  labels  placed  on  the  plaintiffs' 
porter  were  printed. 

On  motion  by  the  plaintiffs,  injunction  granted  to  restrain 
the  defendants  from  making  or  disposing  of  any  such  blocks 
or  plates. 

"  If  a  thing  contains  twenty-five  parts,  and  one  only  is  taken,  such 
an  imitation  will  be  sufficient  to  contribute  to  a  deception,  and  the 
law  will  bold  those  responsible  who  have  contributed  to  the  fraud." 


90.  Fowle  v.  Spear. 

November,  1847.     U.  S.  C.  C.  E.  Dt.  of  Perm.:  Kane,  J.  —  7  Penn.  L. 
J.176-,  R.  Cox,  67. 

MOTION  for  injunction  to  restrain  the  use  of  wrappers,  la- 
bels, and  bottles,  similar  to  those  in  which  a  quack  medicine 
called  "  Wistar's  Baham  of  Wild  Cherry  "  was  contained,  re- 
fused, on  the  ground  of  misrepresentations  by  the  plaintiff  as 
to  the  quality  and  properties  of  his  medicine. 


91.  Partridge  v.  Menck. 

January,  1848.  N.  Y.  Chancery :  Sandford,  V.  C.  ;  Walworlh,  C.  N. 
Y.  Ct.  ofApp.  —  2  Sandf.  Ch.  622;  2  Barb.  Ch.  101;  1  How.  App.  Cos. 
558;  R.  Cox,  72. 

ORDER  dissolving  an  injunction  which  had  been  granted  on 
motion  by  the  maker  of  "  A.  Grolsh's  Friction  Matches"  to 
restrain  the  sale  of  matches  in  boxes  labelled  "Menck  £ 
Backus'  Friction  Matches,  late  Chemist  to  A.  Grolsh"  affirmed, 
on  the  ground,  (1.)  that  ordinary  purchasers  would  not  be  de- 
ceived ;  (2.)  that  the  plaintiff  was  disentitled  by  reason  of  his 
continuing  to  use  the  name  of  Golsh,  to  whose  business  he  had 
succeeded,  after  the  latter  had  ceased  to  be  connected  with  the 
business. 

48 


CLARK  V.  FREEMAN. 

Per  "Walworth,  C.  "  The  question  in  such  cases  is  not  whether 
the  complainant  was  the  original  inventor  or  proprietor  of  the  article 
made  by  him,  and  upon  which  he  now  puts  his  trade-mark,  or  whether 
the  article  made  and  sold  by  the  defendant  under  the  complainant's 
trade-mark  is  an  article  of  the  same  quality  or  value.  But  the  court 
proceeds  upon  the  ground  that  the  complainant  has  a  valuable  interest 
in  the  good-will  of  his  trade  or  business ;  and  that,  having  appropriated 
to  himself  a  particular  label,  or  sign,  or  trade-mark,  indicating  to 
those  who  wish  to  give  him  their  patronage  that  the  article  is  manu- 
factured or  sold  by  him  or  by  his  authority,  or  that  he  carries  on 
business  at  a  particular  place,  he  is  entitled  to  protection  against  a 
defendant  who  attempts  to  pirate  upon  the  good-will  of  the  complain- 
ant's friends  or  customers,  or  the  patrons  of  his  trade  or  business,  by 
sailing  under  his  flag  without  his  authority  or  consent."  1 


92.  Purser  v.  Brain. 
January  21,  1848.     Shadwell,  V.  C.  ofE.  —  ll  L.  J.  Ch.  141. 

THE  plaintiffs,  trading  under  the  name  of  "  The  London 
Manure  Company"  the  defendants  began  to  trade  as  '•'•The 
London  Patent  Manure  Company"  and  to  issue  circulars  imi- 
tated from  the  plaintiff's. 

On  motion  by  the  defendants,  an  injunction  which  had  been 
granted  on  motion  by  the  plaintiffs,  to  restrain  the  defendants 
from  the  use  of  their  name,  and  from  issuing  such  circulars, 
dissolved,  and  an  action  at  law  directed,  on  the  ground  that 
there  might  be  a  question  as  to  the  plaintiffs'  having  acquired 
an  exclusive  right  by  length  of  user,  which  ought  to  be  con- 
sidered by  a  jury. 


93.  Clark  v.  Freeman. 

January  31,  1848.     Lord  Langdale,  M.  R.  —  ll  Beav.  112;  17  L.  J.  Ch. 
142;  12  Jur.  149;  11  L.  T.  22;  35  Leg.  Obs.  436. 

THE  plaintiff,  Sir  James  Clark,  being  an  eminent  physi- 
cian, who  did  not  compound  or  sell  pills,  the  defendant  began 
i  See  Pidding  v.  How,  60. 

*  49 


BULLOCK  V.  CHAPMAN. 

to  compound  and  sell  a  quack  medicine  as  "  Sir  J.  Clarke's 
Consumption  Pills" 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendant  from  so  doing  refused,  on  the  ground  that  there 
was  no  right  of  property  to  be  protected,  and  that  the  court 
had  no  jurisdiction  to  stay  the  publication  of  a  libel,  the  rem. 
edy  for  which  must  be  sought  at  law. 


94.  Fleming  v.  Newton. 

February  17,  1848.     Ct.  of  Session.—  Ct.  of  Sess.  Cas.  2d  Ser.  VIII.  677. 
House  of  Lords  —  1H.L.  C.  363. 

THE  respondent's  name  was  placed  upon  the  register  of 
protests  for  non-acceptances  of  bills  of  exchange. 

Interdict  to  restrain,  so  far  as  the  respondent's  name  was 
concerned,  the  publication  of  a  copy  of  the  register  granted 
by  the  Court  of  Session,  but  rescinded  by  the  House  of  Lords, 
on  the  ground  that  the  question  of  defamation  was  one  for  a 
jury. 

Per  Lord  Cottenham,  C.  (1  H.  L.  C.  376).  "The  liberty  of  the 
press  consists  in  the  unrestricted  right  of  publishing,  subject  to  the 
responsibilities  attached  to  the  publication  of  libels,  public  or  private. 
But  if  the  publication  is  to  be  anticipated  and  prevented  by  the  inter- 
vention of  the  Court  of  Session,  the  jurisdiction  over  libels  is  taken 
from  the  jury,  and  the  right  of  unrestricted  publication  is  destroyed." 


95.  Bullock  v.  Chapman. 

March  1,  1848.     Knight  Bruce,  V.C.  —  2  De  G.  Sf  Sm.  211;  12  Jur.  738  ; 

11  L.  T.  326. 

MOTION  by  the  plaintiff  for  an  injunction  to  restrain  a 
banking  company  from  returning  his  name  to  the  Stamp 
Office,  under  7  &  8  Viet.  c.  113,  among  the  names  of  the 
shareholders  in  the  company,  he  alleging  that  he  had  ceased 
to  be  a  shareholder,  refused,  on  the  ground  that  the  plaintiff's 
case  was  not  clearly  proved,  and  that,  in  any  case,  the  appre- 
hended damage  would  not  be  irreparable. 

50 


PRINCE  ALBERT  V.  STRANGE. 

96.  "Wedgwood  v.  Smith. 
1848.     Shadwell,  V.  C.  ofE. 

THE  plaintiff  being  a  manufacturer  of  pottery,  which  he 
marked  with  his  name,  "  Wedgwood"  the  defendant  began  to 
sell  other  pottery  marked  "  Wedgwood"  or  "  Wedgewood" 

Injunction  granted  to  restrain  the  defendant  from  infring- 
ing the  plaintiff's  mark. 

« 

97.  Scoville  v.  Toland. 

1848.      U.  S.  C.  C.  Dt.  of  Ohio.  —  6  West.  L.  J.  84. 

THE  defendant  imitated  the  labels  used  by  the  plaintiff  on 
certain  medicines  prepared  by  him. 

Injunction  to  restrain  the  defendant  from  so  doing  refused, 
on  the  ground  that  the  case  was  not  within  the  jurisdiction  of 
the  Circuit  Court ;  and  Held,  that  such  labels  were  not  capa- 
ble of  protection  by  means  of  the  provisions  of  the  Copyright 
Acts,  though  an  application  of  them  to  spurious  medicines 
would  be  restrained  on  general  grounds  by  the  proper  court. 

98.  Prince  Albert  v.  Strange. 

January  16,  February  8,  June  2,  1849.  Knight  Bruce,  V.  C.  —  2  De  G. 
if  Sm.  652;  13  Jur.  45-507  ;  12  L.  T.  367;  13  L.  T.  341;  37  Leg.  Obs. 
276.  Lord  Cottenham,  C.—  l  Mac.  if  G.  25 ;  1  H.  if  Tw.  1 ;  8  L.  J. 
Ch.  120 ;  13  Jur.  109  ;  12  L.  T.  441  ;  37  Leg.  Obs.  394. 

THE  defendant  published  a  catalogue  of  certain  etchings 
executed  by  the  plaintiff,  some  copies  of  which  had  been  ob- 
tained surreptitiously  and  by  breach  of  trust,  the  catalogue 
being  so  framed  as  to  lead  to  the  belief  that  the  defendant 
was  acting  with  the  plaintiff's  consent. 

On  motion  by  the  plaintiff,  injunction  granted  to  restrain 
the  exhibition  of  the  etchings  and  publication  of  the  cata- 
logues ;  and  Held,  that  the  Court  of  Chancery  would  exercise 
an  original  and  exclusive  jurisdiction  to  restrain  the  publica- 
tion, not  only  of  unpublished  compositions  which  the  author 

51 


COFFEEN  V.  BBUNTON. 

desired  to  keep  private,  but  also  of  any  catalogue  or  descrip- 
tion of  them  made  and  published  without  his  consent.1 

99.  Coffeen  v.  Brunton.     (1.) 

May,  1849.     U.  S.  C.  C.  Dt.  of  Ind. :  McLean,  J.  —  4  McLean,  516;  R. 

Cox,  82. 

THE  plaintiff  being  the  inventor  and  proprietor  of  a  medical 
preparation  which  he  called  "  The  Chinese  Liniment"  the 
defendant  began  to  make  and  sell  another  preparation  under 
the  name  of  "  The  Ohio  Liniment"  in  bottles  labelled  with 
directions,  etc.,  similar  to  those  on  the  plaintiff's  bottles,  and 
made  other  misrepresentations  calculated  to  deceive,  in  ad- 
vertisements and  handbills. 

On  motion  by  the  plaintiff  injunction  granted  to  restrain 
the  defendant  from  using  such  directions  and  making  such 
misrepresentations  ;  and  Held,  (1.)  that  without  a  patent  there 
could  be  no  exclusive  right  of  manufacture  ;  (2.)  that  where 
a  trade-mark  was  infringed  some  damages  must  be  given  at 
law,  though  no  specific  injury  was  proved. 

"  It  would  seem  that  an  intentional  fraud  is  not  necessary  to  en- 
title the  plaintiff  to  protection,  but  that  where  the  same  mark  or  label 
is  used  which  recommends  the  article  to  the  public  by  the  established 
reputation  of  another  who  sells  a  similar  article,  and  the  spurious  ar- 
ticle cannot  be  distinguished  from  the  genuine  one,  an  injunction  will 
be  granted,  although  there  was  no  intentional  fraud.  And  I  am  in- 
clined to  think  that  this  is  a  correct  view  of  the  principle,  for  the  in- 
jury will  be  neither  greater  nor  less  by  the  knowledge  of  the  party."  a 

1  See  Lord  Byron  v.  Johnston,  23.  purpose  was  to  trade  upon  the  plain- 

2  This  was  not  a  trade-mark  case,  in  tiff's    reputation.     The  injunction   re- 
the  strict  sense  of  the  term,  but  was  de-  strained  the  defendant  from   using  la- 
cided  upon  the  ground  that  the  defend-  bels,  directions,  advertisements,  or  hand- 
ant  had  imitated  the  descriptive  parts  bills  calculated   to   lead   the  public  to 
of  the  plaintiff's  label  in  such  manner  suppose  that  his  "  Ohio  "  liniment  was 
as  to  create  an  impression  that  his  lini-  the  "  Chinese  "  liniment  made  by  the 
ment   was   the  liniment  made  by  the  plaintiff. 

plaintiff.     The  court  said,  that  "  from  The  case  of  Falkiriburg  v.  Lucy,  296, 

the  body  of  the  label  it  was  plain  that  decided  by  the  Supreme  Court  of  Cali- 

the  defendant  had  so  assimilated   the  fornia,  was  a  similar  case.     The  court 

language  employed  by   the   plaintiff"  there  dissolved  an  injunction  which  had 

that  it  could  not  be  doubted  that  the  been  granted  in  the  court  below,  be- 

52 


AMOSKEAG  MANUFACTURING  CO.  V.  SPEAR. 


10O.  The  Amoskeag  Manufacturing  Co.  v.  Spear. 

October,  1849.      N.  Y.  Super.  Ct. :  Duer,  J.  —  2  Sandf.  S.  C.  599  ;  R. 

Cox,  87. 

THE  plaintiff  company  manufacturing  cotton  tickings, 
which  they  sold  with  a  printed  label  affixed  on  which  the  let- 
ters "  A.  C.  A."  were  prominent,  the  defendants  began  to  sell 
a  similar  article  similarly  labelled. 

On  motion  by  the  defendants  to  dissolve  an  injunction, 
which  had  been  granted  to  restrain  the  defendants  from  using 
labels  similar  to  those  of  the  plaintiffs,  or  having  thereon  the 
letters  "  A.  C.  A. :" 

Held,  (1.)  that  a  partial  imitation  would  be  restrained,  if 
it  was  calculated  to  deceive  ;  (2.)  that  a  gratuitous  acquies- 
cence by  the  owner  of  a  trade-mark  in  its  use  by  another  was 
in  the  nature  of  a  license  which  was  revocable  and  might  be 
withdrawn  ;  (3.)  that  the  labels  in  question  were,  as  a  whole, 
calculated  to  deceive,  and  that  the  injunction  must  be  main- 
tained as  to  them,  but  that  as  far  as  it  regarded  the  letters 
"A.  C.  A.,"  which  were  merely  indicative  of  quality,  and 
could  not  be  appropriated,  it  must  be  dissolved  until  an  ac- 
tion at  law  should  result  in  the  plaintiff's  favor. 

"  The  manufacturer's  trade-mark  is  an  assurance  to  the  public  of 
the  quality  of  his  goods,  and  a  pledge  of  his  own  integrity  in  their 
manufacture  and  sale.  To  protect  him,  therefore,  in  the  exclusive 
use  of  the  mark  that  he  appropriates  is  not  only  the  evident  duty  of 
a  court  as  an  act  of  justice,  but  the  interests  of  the  public,  as  well  as 

cause  there  was  no  technical  trade-mark  that  in  probably  every  instance  where 
involved,  the  case  having  been  brought  the  plaintiff  has  not  prevailed  it  has 
under  a  statute  of  California  providing  been  because  of  a  misconception  in 
for  the  protection  of  technical  trade-  bringing  his  suit,  or  because  he  has 
marks.  It  is  not  improbable  that  had  failed  in  his  proofs, 
the  plaintiff  proceeded  at  common  law,  This  line  of  cases  is  not  to  be  con- 
a  diiferent  conclusion  would  have  been  founded  with  the  class  of  which  Amos- 
arrived  at.  There  may  seem  to  be  a  keag  Co.  v.  Spear,  100,  is  the  leading 
conflict  of  opinion  among  the  cases  as  American  example,  where  labels  ap- 
to  the  right  of  a  person  to  be  protected  proximating  nearer  to  technical  trade- 
against  deception  by  a  simulation  of  marks  have  been  passed  upon  and  pro- 
descriptive  matter,  but  it  will  be  found  tected. 

53 


AMOSKEAG  MANUFACTURING  CO.  v.  SPEAR. 

of  the  individual,  require  that  the  necessary  protection  shall  be 
given." 

"  The  owner  of  an  original  trade-mark  ....  has  no  right  to  an 
exclusive  use  of  any  words,  letters,  figures,  or  symbols  which  have  no 
relation  to  the  origin  or  ownership  of  the  goods,  but  are  only  meant 
to  indicate  their  name  or  quality." 

"  In  an  imitation  of  the  original  mark  upon  an  article,  or  goods  of 
the  same  description,  the  name  of  the  proprietor  may  be  omitted,  — 
another  name,  that  of  the  imitator  himself,  may  be  substituted  ;  but 
if  the  peculiar  device  is  copied,  and  so  copied  as  to  manifest  a  design 
of  misleading  the  public,  the  omission  or  variation  ought  to  be  wholly 
disregarded.  Its  object,  we  may  be  certain,  was  not  to  communicate 
the  truth,  but  to  escape  the  penalty  of  falsehood.  A  fraud  is  in- 
tended, an  unlawful  gain  is  meant  to  be  realized,  but  it  is  believed  or 
hoped  that  an  injunction  may  be  avoided,  and  a  claim  for  profits  or 
damages  be  repelled.  The  fraud,  however,  if  a  court  of  equity  is 
true  to  its  principles,  will  be  suppressed,  and  its  fruits  be  intercepted 
or  restored.  My  conclusions  on  this  branch  of  the  subject  are :  that 
an  injunction  ought  to  be  granted  whenever  the  design  of  a  person 
who  imitates  a  trade-mark,  be  his  design  apparent  or  proved,  is  to 
impose  his  own  goods  upon  the  public  as  those  of  the  owner  of  the 
mark,  and  the  imitation  is  such  that  the  success  of  the  design  is  a 
probable  or  even  possible  consequence  ;  and  that  an  injunction  must 
be  granted  whenever  the  public  is  in  fact  misled,  whether  intention- 
ally or  otherwise,  by  the  imitation  or  adoption  of  marks,  forms,  or 
symbols  which  the  party  who  first  employed  them  had  a  right  to  ap- 
propriate ;  and  this  for  the  plain  reason,  that  when  a  right  of  prop- 
erty has  been  thus  acquired  it  must  be  protected."  1 

1  This  case  is  justly  regarded  as  the  in  effect  held  that  to  constitute  in- 
leading  American  adjudication,  espe-  fringement  there  must  be  such  a  simi- 
cially  as  defining  the  doctrine  of  in-  larity  as  would  mislead  a  person  exer- 
fringement.  It  is  not  going  too  far  to  cising  exceptional  caution,  would  have 
say  that  the  doctrines  of  the  opinion  given  form  to  a  permanent  digression, 
have  remained  unshaken ;  there  have  had  it  been  possible.  Although  the 
been  departures  from  time  to  time,  opinion  in  that  case  was  by  a  court  of 
some  of  them  of  a  notable  character,  last  resort,  the  decision  was  singularly 
but  the  principles  formulated  by  Judge  unproductive  of  effect.  It  was  followed 
Duer  have  not  been  permanently  varied,  in  the  Merrimac  Manufacturing  Com- 
The  case  of  Partridge  v.  Menck,  91,  de-  pany  v.  Garner,  134,  in  the  General 
cided  by  the  court  of  last  resort  of  Term  of  the  Supreme  Court  of  New 
New  York  in  1848,  contemporaneously  York  a  few  years  later,  and  to  some 
with  the  principal  case,  in  which  it  was  extent  in  other  adjudications,  but  not, 

54 


RUDDEROW  V.  HUNTINGTON. 


1O1.  Rudderow  v.  Huntington. 
October,  1849.     N.  Y.  Super.  Ct.—3  Sandf.  S.  C.  252  ;  R.  Cox,  106. 

THE   plaintiffs,  auctioneers,  having  sold  certain  boxes   of 
what  was  supposed  to  be,  and  was  labelled  as,  "Thompson's 

Nor  is  it  necessary,  in  order  to  give  a 
right  to  an  injunction,  that  a  specific 
trade-mark  should  be  infringed  ;  but  it 
is  sufficient  that  the  court  is  satisfied 
that  there  was  an  intent  on  the  part  of 
the  respondent  to  palm  off  his  goods  as 
the  goods  of  the  complainant. 

"  Difficulty  frequently  arises  in  deter- 
mining the  question  of  infringement; 
but  it  is  clear  that  exact  similarity  is 
not  required,  as  that  requirement  would 
always  enable  the  wrong-doer  to  evade 
responsibility  for  his  wrongful  act. 

"  Colorable  imitation,  which  requires 
careful  inspection  to  distinguish  the 
spurious  trade-mark  from  the  genuine, 

is  sufficient  to  maintain  the  issue 

Where  the  similarity  is  sufficient  to 
convey  a  false  impression  to  the  public 
mind,  and  is  of  a  character  to  mislead 
and  deceive  the  ordinary  purchaser  in 
the  exercise  of  ordinary  care  and  cau- 
tion in  such  matters,  it  is  sufficient  to 
give  the  injured  party  a  right  of  re- 
dress." 

In  the  case  of  Consolidated  Fruit  Jar 
Co.  v.  Thomas,  668,  an  opinion  of  ex- 
ceptional value  was  delivered  in  which 
Judge  Nixon  writes  :  — 

"It  is  not  necessary  for  the  com- 
plainant to  show  an  exact  imitation. 
....  No  matter  how  vague  may  be  the 
resemblance,  if  it  be  sufficient  to  mis- 
lead the  public,  it  is  unlawful ;  and 
when  unexplained,  it  is  the  duty  of  the 
court  to  infer  intent,  and  to  hold  that 
the  resemblance  was  adopted  for  the 
purpose  of  deception."  See,  also,  Royal 
Baking  Powder  Co.  v.  McQuade,  674. 

Not  less  advanced  are  the  recent  Eng- 
lish cases,  although  there  may  appear  to 
be  instances  which  point  toward  the  ap- 
plication of  a  more  exact  rule.  In  Orr 


it  is  believed,  in  any  instance  by  the 
court  of  final  appeal  of  the  state.  On 
the  contrary,  the  view  announced  in  the 
Amoskeag  case  was  accepted  without 
regard  to  the  more  authoritative  prece- 
dent in  Burnett  v.  Phalon,  277 ;  New- 
man v.  Ah-ord,  282 ;  Colinan  v.  Crump, 
579,  and  other  cases,  the  line  having,  it 
may  be  safely  said,  remained  unbroken 
until  the  present  time.  It  is  not  im- 
probable that  judicial  remark  may  be 
found  which  is  not  in  perfect  accord 
with  what  has  been  stated  to  be  the 
accepted  view ;  but  it  is  undoubtedly 
true  that  the  great  weight  of  authority 
fully  sustains  the  comprehensive  rule 
laid  down  at  the  beginning. 

In  Colman  v.  Crump,  579,  in  the 
Court  of  Appeals  of  New  York  in  1878, 
which  is  the  last  decision  of  that  court 
on  the  subject  of  infringement,  the  prin- 
cipal case  is  pointedly  affirmed. 

The  rule  as  laid  down  in  New  York 
has  been  unreservedly  recognized  in 
Connecticut,  without  variation  (Mer. 
Britannia  Co.  v.  Parker,  409),  and  to 
all  the  intents  and  purposes  in  the 
courts  of  all  the  other  states  in  which 
trade-mark  cases  have  arisen.  Lowell 
Man.  Co.  v.  Lowell  Hosiery  Mills,  676. 

The  recent  cases  in  the  federal  courts 
are  not  less  liberal.  In  McLean  v. 
Fleming,  580,  decided  by  the  Supreme 
Court  in  1877,  Judge  Clifford,  writing 
for  the  court,  uses  the  following  lan- 
guage :  — 

"  Positive  proof  of  fraudulent  intent 
is  not  required  where  proof  of  infringe- 
ment is  clear,  as  the  liability  of  the  in- 
fringer  arises  from  the  fact  that  he  is 
enabled,  through  unwarranted  use  of 
the  trade-mark,  to  sell  a  simulated  ar- 
ticle as  and  for  one  which  is  genuine. 


55 


DAVIS  V.  KENDALL. 

Eye  Water  ;  "  but  without  any  warranty,  or  false  representa- 
tion, the  purchaser,  who  had  given  a  promissory  note  for  the 
price,  discovered  the  lotion  and  labels  to  be  spurious,  and  re- 
fused to  pay  for  it. 

Action  on  the  note.  Held,  that  the  plaintiffs  being  igno- 
rant of  the  fraud,  and  having  made  no  warranty  or  false  rep- 
resentation, were  entitled  to  recover  the  price. 


102.  Smale  v.  Graves. 

February  14,  1850.     Knight  Bruce,  V.  C.  —  3  De  G.  £  Sm.  706;  19  Z. 
J.  Ch.  157;  14  Jur.  662  ;  15  L.  T.  179. 

THE  defendant,  being  the  widow  and  acting  executrix  of  a 
surgeon  dentist,  agreed  to  sell  to  a  person,  as  his  successor,  the 
good-will  of  the  practice  and  an  introduction  to  the  patients, 
for  an  annuity  of  £100  for  five  years,  to  be  paid  by  half- 
yearly  instalments,  to  be  secured  by  mortgage. 

Administration  suit.  Held,  that  if  not  the  whole,  at  any 
rate  some  part  of  the  annuity  belonged  to  the  estate. 


103.  Davis  v.  Kendall. 

September,  1850.     Rhode  /.  Sup.  Ct.  —  2  R.  I.  566 ;  R.  Cox,  112. 

THE  plaintiff,  being  the  original  inventor  and  manufacturer 
of  "  Perry  Davis1  Pain  Killer"  the  defendant  began  to  make 
and  sell  another  article  as  "  Perry1  s  Vegetable  Pain  Killer" 
and  in  bottles  similarly  labelled  to  the  plaintiff's. 

Action  on  the  case.  Held,  that  the  plaintiff  was  entitled 
to  judgment. 

Per  Greene,  C.  J.  "  All  are  entitled  to  make  and  vend  this  com- 
pound, and  to  vend  it  as  a  similar  article  to  that  made  and  sold  by 
the  plaintiff;  but  no  one  but  the  plaintiff  has  a  right  to  sell  it  as  a 
medicine  manufactured  by  the  plaintiff.  The  adoption  of  the  same 
label  as  the  plaintiff's  will,  of  course,  be  actionable ;  and  so  the  adop- 
tion of  a  label  so  like  the  plaintiff's  as  to  mislead  the  public  would 

v.  Johnston,  646,  and  Thorley's  Food  Co.     be  the  rule  in  England  is  perspicuously 
v.  Massam,  671,  what  is  to  be  taken  to      stated. 

56 


JOLLIE  V.  JAQUES. 

be  actionable.     If  the  difference  be  merely  colorable,  it  will  not  avail 
the  defendant."  1 


104.  Stone  v.  Carlan. 

1850.     N.  Y.  Super.  Ct.:  Campbell,  J.—  13  Monthly  L.  R.  360;  R.  Cox, 

115. 

THE  plaintiffs  being  coach-proprietors,  who  had  contracted 
with  the  proprietors  of  "  The  Irving  Hotel"  at  New  York, 
for  the  conveyance  to  and  fro  of  their  visitors,  and  for  the 
use  of  their  name  and  that  of  their  hotel  upon  their  coaches 
and  their  servants'  badges,  the  defendants  used  the  names 
"Irving  Hotel,"  "Irving  House"  "Irving,"  etc.,  upon  their 
coaches  and  servants'  badges. 

On  motion  by  the  plaintiffs,  injunction  granted  to  restrain 
the  defendants  from  so  doing.2 


1O5.  Jollie  v.  Jaques. 

October,  1850.     U.  S.  C.  C.  S.  Dt.  of  N.  Y. :  Nelson,  J.  —  1  Bl.  C.  C. 

618. 

SUIT  under  the  U.  S.  Copyright  Act  of  1831,  to  restrain 
an  imitation  of  a  musical  composition  entitled  "The  Serious 
Family  Polka." 

It  having  been  decided  that  the  plaintiff's  claim  to  copy- 
right could  not  be  supported  :  Held,  that  the  plaintiff  not 
being  entitled  to  the  copyright  in  the  composition,  he  was  not 
entitled  to  protection  in  respect  of  the  title. 

"  The  title  or  name  is  an  appendage  to  the  book  or  piece  of  music 
for  which  the  copyright  is  taken  out,  and  if  the  latter  fails  to  be  pro- 
tected, the  title  goes  with  it,  as  certainly  as  the  principal  carries  with 
it  the  incident"8 

1  See  Davis  v.  Kennedy,  281.  But  the  name  of  a  book  is  never  a 

2  See  Howard  v.  Henriques,  108.  trade-mark,  and  cannot  be.     For  if  it 
8  Whatever  right  of  property  there  is      is,  it  is  a  common  law  right  which  is  of 

in  any  symbol  or  word,  wherever  found,  the  same  force  in  Great  Britain  as  in 

or  in  any  thing  that  serves  to  individ-  the  United  States,  and  the  author  may 

ualize  an  article,  depends  upon  princi-  protect  it  in  both  countries.     This  he 

pies  analogous  to  those  which  underlie  cannot  do,  for  the  reason  that  the  right 

the  law  of  trade-marks.  to  print  a  literary  composition  involves 

57 


HOLLOWAY  V.  HOLLOWAY. 


106.     Holloway  v.  Holloway. 

November  9,  1850.    Lord  Langdale,  M.  R.  —  13  Beav.  209 
THE  plaintiff,  Thomas  Holloway,  manufacturing  and  sell- 
ing pills  and  ointment  at  244  Strand,  as  "  Holloway 's  Pills 
and   Ointment"  the   defendant,  his   brother,   Henry  Hollo- 


the  right  to  call  it  what  it  is.  Or,  as 
here  decided,  where  a  copyright  fails, 
the  right  to  the  name  of  the  work  fails 
also,  the  two  becoming  publici  juris  at 
the  same  time.  There  would  be  a  spe- 
cies of  fraud  in  an  American  reprint 
of  "  Ivanhoe,"  under  the  title  of  "  The 
Knight  of  the  Black  Plume,"  and  yet  no 
remedy  of  any  sort.  But  to  publish  the 
story  of  ''  Uncle  Tom's  Cabin  "  under 
the  title  of  "  Aunt  Chloe's  Home " 
would  be  an  invasion  of  the  copyright 
law  ;  while  to  print  another  novel  un- 
der the  name  of  "  Uncle  Tom's  Cabin  " 
would  be  an  inj  ury  involving  a  remedy 
of  an  entirely  different  nature.  In  the 
instance  last  mentioned  there  would  be 
no  violation  of  the  copyright,  but  an 
infraction,  to  all  intents  and  purposes, 
of  a  trade-mark. 

But  how  can  the  injury  be  an  inva- 
sion of  a  right  at  common  law,  and  yet 
be  confined  to  this  country?  The  an- 
swer to  this  is,  that  the  exclusive  right 
flows  from  a  statutory  privilege.  The 
author  acquires  the  sole  right  to  print 
the  book,  and  the  sole  right  to  call  it  by 
its  proper  name  is  an  inseparable  inci- 
dent which  remains  in  him,  ex  necessi- 
tate rei,  as  long  as  he  alone  can  produce 
it.  The  sale  of  another  book  under  the 
name  of  one  which  no  other  person  has 
the  right  to  sell  is  a  misrepresentation, 
accompanied  by  a  loss  of  sales,  and  an 
actionable  injury  under  the  principles 
which  govern  the  law  of  trade-marks. 
The  theory  is  not  unlike  that  laid  down 
in  a  number  of  cases.  In  the  Congress 
Spring  case,  854,  it  was  decided  that 
the  word  "  Congress,"  when  applied  to 
water,  was  the  property  of  the  proprie- 
tors of  Congress  Spring,  because  "  Con- 
gress water"  could  only  be  obtained 


from  Congress  Spring,  and  Congress 
Spring  belonged  to  the  plaintiffs. 

But  it  is  quite  apparent  that,  in  or- 
der to  be  susceptible  of  protection,  the 
title  of  a  book  must  be  distinctive,  and 
not  descriptive.  That  is,  it  must  b« 
original  in  itself,  or  in  its  application, 
and  not  a  mere  statement  of  a  fact  that 
would  be  equally  true  of  other  and  dif- 
ferent books.  To  illustrate  :  "The  Life 
of  Thackeray  "  could  not  be  monopo- 
lized, as  it  is  a  mere  statement  of  a 
fact  that  is  essentially  publici  juris  ;  but 
"  Evenings  with  Thackeray  "  would  be 
of  a  different  nature,  and  analogous  to 
a  trade-mark,  the  words  being  invested 
with  a  secondary  meaning,  having  re- 
lation to  a  particular  volume,  and  which 
would  be  untrue  in  their  application  to 
any  other. 

In  addition  to  the  title,  under  the  re- 
strictions mentioned,  the  names  of  edi- 
tions may  be  protected,  as  they  are  in  a 
true  sense  trade-marks  ;  but,  in  respect 
of  designations  of  this  class,  the  same 
doctrines  obtain  as  in  the  case  of  other 
trade-marks,  and  they  are  without  le- 
gal qualities  unless  of  an  arbitrary  nat- 
ure at  the  time  of  their  application. 
Thus,  "  The  Riverside  Edition "  is 
good  as  a  mark  irrespective  of  the  copy- 
right law.  "  Bric-a-Brac  Series  "  would 
have  been  equally  valid  had  it  been 
used  to  denote  an  edition,  the  edition  of 
a  particular  house,  and  not  as  a  title 
to  signify  a  particular  collocation.  But 
"  American  Edition  "  would  be  without 
a  single  element  of  force. 

The  leading  points  above  stated  have 
never  been  fully  examined  by  the  courts. 
They  are,  however,  deductions  that  are 
based  upon  established  principles.  See 
Hogg  v.  Kirby,  10. 


58 


FOOT  v.  LEA. 

way,  began  to  sell  other  pills  and  ointment  at  210  Strand, 
as  " H.  Holloivay^s  Pills  and  Ointment"  the  pill-boxes,  pots, 
labels,  and  wrappers  being  similar  to  those  used  by  the  plain- 
tiff. 

On  motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendant  from  infringing  the  plaintiff's  rights  : 

Held,  (1.)  that  the  defendant's  conduct  was  intended  and 
calculated  to  deceive  ;  (2.)  that  the  fact  that  the  defendant's 
name  was  the  same  as  the  plaintiff's  did  not  entitle  him  so  to 
act ;  (3.)  that  the  assumption  by  the  plaintiff,  without  author- 
ity, of  the  title  of  "  Professor,"  and  some  exaggerated  com- 
mendations of  his  medicines  did  not  disentitle  him  ;  (4.)  that 
the  injunction  must  be  granted ;  (5.)  that  the  defendant  al- 
leging that  he  had  not  had  time  to  answer  the  plaintiff's  affi- 
davits, liberty  must  be  given  him,  expressed  in  the  order,  to 
move  to  dissolve  the  injunction. 

"  The  defendant's  name  beiug  Holloway  he  has  a  right  to  consti- 
tute himself  a  vendor  of  Holloway's  pills  and  ointment,  and  I  do  not 
intend  to  say  anything  tending  to  abridge  any  such  right.  But  he 
has  no  right  to  do  so  with  such  additions  to  his  own  name  as  to  de- 
ceive the  public,  and  make  them  believe  that  he  is  selling  the  plain- 
tiff's pills  and  ointment." 

"  I  do  not  mean  to  say  that  I  have  any  sort  of  respect  for  this  sort 
of  medicines.  I  have  none  ;  but  the  law  protects  persons  from  fraud- 
ulent misrepresentations,  and  this  is  a  species  of  property  which 
the  law  does  allow,  and  so  long  as  the  law  recognizes  it,  it  must  be 
protected,  and  persons  in  the  situation  of  the  defendant  will  not  be 
allowed  to  practise  a  fraud  like  that  here  complained  of." 


107.  Foot  v.  Lea. 
December  5,  1850.     Smith,  M.  R.ofl.  —  13  Ir.  Eq.  484. 

THE  petitioners,  Lundy  Foot  &  Co.,  being  Dublin  snuff 
manufacturers,  who  used  a  show-board  over  their  door,  and 
placed  labels  on  their  packets  of  snuff,  on  each  of  which 
their  name  appeared,  the  respondent,  who  had  formerly 
been  in  their  employ,  opened  a  shop  in  Dublin,  and  styled 

59 


COFFEEN  V.  BRUNTON. 

himself  on  the  show-board  over  his  door,  and  on  the  labels 
on  his  packets  of  snuff,  "  A.  Lea,  late  of  Lundy  Foot  $ 
Co."  the  words  "  late  of  •"  being  much  smaller  than  the 
rest. 

Petition  for  an  injunction  to  restrain  the  respondent  from 
so  doing  dismissed,  on  the  ground  that  the  question  was 
one  of  a  legal  right  which  must  be  decided  at  law. 


108.  Howard  v.  Henriques. 
March,  1851.     N.  Y.  Super.  Ct.  —  S  Sandf.  S.  C.  725;  R.  Cox,  129. 

THE  plaintiff,  being  the  proprietor  of  a  hotel  at  New  York, 
called  the  "Irving  House,"  or  "Irving  Hotel,"  the  defendant 
opened  another  hotel  at  New  York  under  the  same  name. 

Motion  by  the  defendant  to  dissolve  an  injunction  which 
had  been  granted,  on  motion  by  the  plaintiff,  to  restrain  the 
defendant  from  so  doing,  refused. 

Per  Campbell,  J.  "  We  think  that  the  principle  of  the  rule  is  the 
same,  to  whatever  subject  it  may  be  applied,  and  that  a  party  will  be 
protected  in  the  use  of  a  name  which  he  has  appropriated,  and  by  his 
skill  rendered  valuable,  whether  the  same  is  upon  articles  of  personal 
property  which  he  may  manufacture,  or  applied  to  a  hotel  where  he 
has  built  up  a  prosperous  business."  x 


109.  Coffeen  v.  Brunton.     (2.) 

May,  1851.     U.  S.  C.  C.  Dt.  oflnd.:  McLean,  J.  —  5  McLean,  256  ;  R. 

Cox,  132. 

THE  plaintiff  being  the  proprietor  of  a  medical  preparation 
called  "  The  Chinese  Liniment,"  the  defendant  began  to  sell 
another  preparation  under  the  name  of  "  The  Ohio  Lini- 
ment," in  bottles  similarly  labelled. 

1  Upon    recognized    principles,    the  "  OSBORNE  HOUSE,"  323  ;  "  WOOD'S 

following  names  have  been  protected :  HOTEL,"  467 ;  "  BOOTH'S  THEATRE," 

"  WHAT  CHEER  HOUSE,"  212  ;  "  RE-  524  ;  "  ASHFORD  LODGE,"  631. 

VERB     HOUSE,"     111 ;     M'CAKDELL  Protection  to  the  name  "  STATION 

HOUSE,"  233 ;   "  PRESCOTT  HOUSE,"  HOTEL,"    520,    was    refused,   on    the 

266 ;     "  CARRIAGE     BAZAAR,"    294  j  ground  that  it  was  descriptive. 

60 


MOBISON  V.  MOAT- 

Injunction  to  restrain  the  defendant  from  so  doing  refused, 
on  the  ground  that  the  defendant  was  originally  concerned 
with  the  plaintiff  in  bringing  out  the  lotion,  that  a  partner- 
ship between  them  had  been  in  contemplation,  and  that  it 
was  at  least  probable  that  the  defendant  was  acquainted  with 
the  composition  of  the  plaintiff's  lotion,  so  that  the  plaintiff 
should  be  required  to  try  his  right  at  law  in  the  first  place. 

"  To  entitle  a  complainant  to  protection  against  a  false  representa- 
tion, it  is  not  essential  that  the  article  should  be  inferior  in  quality, 
or  that  the  individual  should  fraudulently  represent  it  so  as  to  im- 
pose upon  the  public ;  but  if  by  representation  it  be  so  assimilated 
as  to  be  taken  in  the  market  for  an  established  manufacture  or  com- 
pound of  another,  the  injured  person  is  entitled  to  an  injunction. 
The  injury  is  not  the  less,  though  the  false  representations  be  made 
without  a  knowledge  of  such  interference." 


110.  Morison  v.  Moat. 

August  20,  1851  ;  January  22,  1852.  Turner,  V.  C.  —  9  Hare,  241  ;  20 
L.  J.  Ch.  513;  15  Jur.  787.  Knight  Bruce  and  Lord  Cranworlh,  L. 
JJ.  —  21  L.  J.  Ch.  284  ;  16  Jur.  321. 

THE  plaintiffs  being  two  of  the  surviving  partners  in  the 
firm  of  Morison,  Moat  &  Co.,  and  the  legatees  of  the  secret 
recipe  and  prescription  of  an  unpatented  medicine  called 
"  Morison  s  Universal  Medicine"  the  defendant,  who  was  the 
third  surviving  partner  in  the  firm,  began,  after  the  dissolu- 
tion of  the  partnership,  to  use  the  secret  recipe,  and  sell  the 
medicine  under  the  same  name,  having  made  himself  ac- 
quainted with  the  secret  through  a  breach  of  confidence  on 
the  part  of  a  third  person. 

On  motion  by  the  plaintiffs,  injunction  granted  to  restrain 
the  defendant  from  using  the  secret  recipe  or  selling  any  med- 
icine under  the  name;  and  Held,  that  a  defence  of  delay  on 
the  part  of  the  plaintiffs  failed. 

Per  Turner,  V.  C.  (9  Hare,  258).  "  What  we  have  to  deal  with 
here  is,  not  the  right  of  the  plaintiffs  against  the  world,  but  their 
right  against  the  defendant.  It  may  well  be  that  the  plaintiffs  have 

61 


LUMLEY  V.  WAGNER. 

no  title  against  the  world  in  general,  and  may  yet  have  a  good  title 
against  this  defendant." 

Per  Lord  Cran worth,  L.  J.  (21  L.  J.  Ch.  248).  "  There  is  no 
doubt  whatever  that  where  a  party  who  has  a  secret  in  a  trade  employs 
persons  under  contract  express  or  implied,  or  under  duty  express 
or  implied,  those  persons  cannot  gain  the  knowledge  of  that  secret 
and  then  set  it  up  against  their  employer." 


111.  Marsh  v.  Billings. 

March,  1852.    Mass.  Sup.  Ct.  —  7  Cush.  322;  14  Monthly  L.  R.  (4  N.  S.) 
664;  R.  Cox,  118. 

THE  plaintiffs  being  coach-proprietors,  who  had  purchased 
from  the  proprietor  of  "  The  Revere  House  "  hotel,  at  Boston, 
the  exclusive  right  of  conveyance  of  the  visitors  to  that  hotel, 
and  the  use  of  the  name  of  the  hotel  on  their  coaches,  servants' 
badges,  etc.,  the  defendants,  who  had  had  the  same  right  pre- 
viously to  the  plaintiffs,  continued  to  act  in  the  same  manner 
after  the  right  had  passed  to  the  plaintiffs. 

Action  on  the  case. 

Held,  that  the  defendants  were  entitled  to  convey  passen- 
gers freely,  but  that  they  were  not  entitled  to  falsely  represent 
themselves  as  having  the  patronage  of  the  proprietor  of  the 
establishment ;  and  that  the  plaintiffs  were  entitled  to  recover 
such  damages  as  the  jury,  upon  the  whole  evidence,  should  be 
satisfied  that  they  had  sustained,  and  not  merely  for  the  loss 
of  such  passengers  as  could  be  actually  proved  to  have  been 
diverted  from  their  coaches  to  the  defendants'."  l 


112.  Lumley  v.  "Wagner. 

May  20,  26,  1852.     Parker,  V.  C.  —  5  De  G.  fr  Sm.  485.     Lord  St.  Leon- 
ards, C.—lDe  G.,  M.  Sf  G.  604;  21  L.J.  Ch.  898;  16  Jur.  871. 

THE  plaintiff  being  a  theatrical  manager,  the  defendant,  a 
singer,  agreed  with  him  to  sing  at  his  theatre  for  a  certain 
period,  and  there  only,  but  subsequently  agreed  to  sing  at 
another  theatre  before  that  period  had  elapsed. 
1  See  Howard  v.  Henriques,  108. 

62 


TURNER  V.  EVANS. 

On  motion  by  the  plaintiff,  injunction  granted  to  restrain 
the  defendant  from  singing  elsewhere  without  permission,  dur- 
ing the  existence  of  the  agreement;  and  Held,  that  the  posi- 
tive and  negative  stipulations  formed  one  contract,  and  that 
the  violation  of  the  negative  stipulation  would  be  prevented, 
though  the  specific  performance  of  the  entire  agreement  could 
not  be  enforced. 

113.  Farina  v.  Shaw. 

June  3,  1852.     Parker,  V.  C.  — Cited  3Eq.  Rep.  886-7;  1  K.  Sf  J.  514; 
24  L.  J.  Ch.  632;  25  L.  T.  211;  3  W.  R.  532. 

THE  plaintiff  being  a  manufacturer  of  Eau  de  Cologne, 
which  he  sold  in  bottles  bearing  special  labels,  the  defendant, 
a  printer,  printed  and  sold  other  labels  similar  to  those  used 
by  the  plaintiff. 

Suit  for  an  injunction.  The  defendant  undertook  not  to 
print  or  sell  any  labels  in  infringement  of  the  plaintiff's  rights, 
and  to  give  up  all  labels  in  his  possession,  and  the  plates  for 
printing  them,  and  to  pay  X50  costs.1 


114.  Turner  v.  Evans. 

July  30,  1852;  June  6,  1853.  Knight  Bruce  and  Lord  Cranworth,  L.  JJ. 
—  2De  G.,  M.  §•  G.  740.  Queen's  Bench.  —  2E.tfB.  512;  22  L.  J.  Q. 
£.412;  17  Jur.  1073;  21  L.  T.  153;  1  W.  R.  434. 

THE  plaintiffs  purchased  from  the  defendant,  a  wine  mer- 
chant in  the  counties  of  Carnarvon,  Anglesea,  and  Merioneth, 
his  business,  stock  in  trade,  etc.,  including  £ 2,000  as  a  pre- 
mium for  the  good-will,  and  the  defendant  agreed  (among 
other  things)  not  directly  or  indirectly  to  carry  on  the  busi- 
ness of  a  wine  merchant  in  those  counties.  He  subsequently 
set  up  business  outside  those  counties,  but  solicited  and  ob- 
tained orders  within  them. 

On  motion  by  the  plaintiffs  for  an  injunction  to  restrain  the 
defendant  from  soliciting  orders,  Held,  by  Kindersley,  V.  C. 
1  See  Farina  r.  Silverlock,  130. 

63 


EODGEBS  V.  NOWILL. 

(affirmed  by  Lord  Cran worth,  L.  J.),  that  there  had  been  no 
breach  of  the  agreement,  and  that  the  injunction  must  be  re- 
fused until  after  a  trial  at  law. 

Action  of  assumpsit.  Verdict  for  the  defendant  directed, 
with  leave  to  move  to  enter  a  verdict  for  the  plaintiffs,  with 
nominal  damages. 

On  motion  by  the  plaintiffs  accordingly,  Held,  that  there 
had  been  a  breach  of  the  agreement.  Injunction  subsequently 

granted. 

> 

115.  Eodgers  v.  Nowill.     (2.) 

January  17,  February  22,  1853.  Stuart,  V.  (7. —  17  Jur.  109;  1  W.  R. 
122.  Knight  Bruce  and  Turner,  L.  JJ.  —  3  De  G.,  M.  £  G.  614  ;  22  L. 
J.  Ch.  404;  17  Jur.  171;  20  L.  T.  319;  1  W.  R.  205-216. 

THE  defendant  having  been  restrained  from  the  use  of  a 
certain  trade-mark  on  cutlery,  consisting  of  "  J.  Rodgers  $ 
Sons"  with  a  crown  and  "  V.  R"  {Rodyers  v.  Nowill  (1)), 
afterwards  entered  into  a  partnership  with  his  father  and 
brother  in  1848,  and  thenceforward  used  the  same  mark, 
sometimes  with  colorable  additions. 

On  motion  for  committal  for  breach  of  the  injunction  in 
1853,  Held,  by  the  V.  C.,  that,  on  account  of  the  plaintiffs' 
delay,  the  motion  must  be  refused,  but  without  costs  ;  by  the 
L.  JJ.,  that  the  defendant  must  be  committed,  unless  within  a 
week  he  suggested  and  undertook  to  use  for  the  future  a  mark 
which  the  court  should  approve. 

Per  Turner,  L.  J.  "  On  the  question  of  acquiescence,  I  think  that 
in  a  case  of  this  description,  where  there  has  been  an  injunction 
granted  by  this  court,  there  must,  in  order  to  deprive  the  party  who 
has  obtained  the  injunction  of  the  right  to  move  for  committal  upon 
the  breach  of  it,  be  a  case  made  out  almost  amounting  to  such  a  li- 
cense to  the  party  enjoined  to  do  the  act  enjoined  against,  as  would 
enable  him  to  maintain  a  bill  against  others  for  doing  that  act.  The 
party  enjoined  must,  I  think,  show  such  acquiescence  as  would  be 
sufficient  to  create  new  right  in  him." 

64 


BURGESS  V.  BURGESS. 

116.  Flavel  v.  Harrison. 

February  22,  1853.      Wood,  V.  C.  — 10  Hare,  467  ;  22  L.  J.  Ch.  866;  17 
Jur.  368;  1  W.  R.  213. 

THE  plaintiff  being  the  manufacturer,  in  succession  to  his 
father,  the  original  inventor,  of  an  article  which,  though  not 
patented,  he  called  " FlaveTs  Patent  Kitchener"  the  defend- 
ant, who  had  been  in  the  plaintiff's  employ,  began  to  adver- 
tise for  sale  other  goods  under  the  same  name. 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the  de- 
fendant from  so  doing  refused,  liberty  being  given  to  bring 
an  action,  on  the  ground  that,  (1.)  the  plaintiff  falsely  de- 
scribed his  article  as  patented ;  (2.)  he  had  delayed  making 
his  motion  for  four  months  after  he  had  known  of  the  defend- 
ant's use  of  the  name. 

"  I  think  that  the  use  of  the  word  '  patent '  operates  to  prevent  the 
public  from  testing  it  (the  invention)  as  they  otherwise  might ;  they 
are  dissuaded  from  examining  the  article  with  a  view  to  imitation ; 
and  it  is  in  evidence  that  persons  were  prevented  from  making  that 
free  use  of  it  which  every  purchaser  has  a  right  to  make  of  an  unpat- 
ented  article.  The  knowledge  that  there  was  no  patent  would  ena- 
ble and  encourage  every  ironmonger  who  bought  the  article  to  take 
it  to  pieces,  and  examine,  and  make  copies  and  models  of  all  the 
parts,  for  the  purpose  of  imitation,  if  he  thought  it  likely  to  be  useful, 
which  he  would  never  think  of  doing  with  regard  to  a  patented  arti- 
cle." 1 


117.  Burgess  v.  Burgess. 

March  17,  1853.     Knight  Bruce  and  Turner,  L.  JJ.—3  De  G.,  M.  tf  G. 
896  ;  22  L.  J.  Ch.  675  ;  17  Jur.  292;  21  L.  T.  53. 

THE  plaintiff  manufacturing  '•'•Burgess'  Essence  of  Ancho- 
vies" at  107  Strand,  the  defendant,  who  was  his  son,  and 
had  been  in  his  employ,  set  up  a  business  for  himself,  in  which 
he  styled  himself,  on  his  shop  front  and  labels,  as  "  late  of 
107  Strand"  and  called  the  article  he  made  "Burgess'  Es- 
sence of  Anchovies" 

1  See  Leather  Cloth  Co.  v.  American  Leather  Cloth  Co.  223. 

5  65 


BURGESS  v.  BURGESS. 


On  motion  by  the  plaintiff,  before  Kindersley,  V.  C.,  in- 
junction granted  as  to  "  late  of  107  Strand,"  but  refused  as  to 
'•'•Burgess'  Essence  of  Anchovies" 

On  appeal,  Held,  (1.)  that  in  the  absence  of  fraud  the  de- 
fendant could  not  be  restrained  from  using  his  own  name,  or 
describing  his  article  as  being  what  in  fact  it  was  ;  (2.)  that 
a  delay  from  October  to  March  in  appealing  from  the  refusal 
of  the  motion  for  an  injunction  was  fatal  to  the  appeal;  (3.) 
and  that  the  wider  injunction  must  be  refused. 

Per  Turner,  L.  J.  "  Where  a  person  is  selling  goods  under  a 
particular  name,  and  another  person,  not  having  that  name,  is  using 
it,  it  may  be  presumed  that  he  so  uses  it  to  represent  the  goods  sold 
by  himself  as  the  goods  of  the  person  whose  name  he  uses  ;  but  where 
the  defendant  sells  goods  under  his  own  name,  and  it  happens  that 
the  plaintiff  has  the  same  name,  it  does  not  follow  that  the  defendant 
is  selling  his  goods  as  the  goods  of  the  plaintiff.  It  is  a  question  of 
evidence  in  each  case  whether  there  is  false  representation  or  not."  * 


1  The  right  of  a  man  to  use  his  own 
name  has  been  the  subject  of  much  dis- 
cussion. In  the  United  States  and  Eng- 
land it  is  safe  to  say  that  the  rule  has 
been  settled  with  reasonable  certainty. 
It  is  now  established  that  a  court  will 
not  hesitate  to  direct  the  manner  in 
which  a  man  shall  use  his  name ;  he 
will  not  be  prevented  from  using  it,  but 
he  will  be  compelled  to  use  it  honestly ; 
as  far  as  he  makes  it  an  instrument  in 
the  perpetration  of  fraud,  just  so  far 
will  equity  pursue  and  check  him. 

The  rule  was  formulated  by  the  Court 
of  Appeals  of  New  York  in  the  case  Me- 
neely  v.  Meneely,  472,  in  which  it  was 
said,  that  while  the  court  would  not  ab- 
solutely restrain  the  defendant  Meneely 
from  the  use  of  his  own  name,  it  would 
enjoin  him  from  using  it  in  such  a  way 
as  to  deceive  the  public  and  injure  the 
plaintiff.  The  Supreme  Court  of  Con- 
necticut, in  Meriden  Britannia  Company 
v.  Parker,  409,  said :  "  We  think  the 


petition  should  be  granted  so  far  as  to 
restrain  the  use  of  the  words  '  Rogers 
Bros.,'  but  the  use  of  the  name  'Rog- 
ers '  ought  not  to  be  prohibited."  There 
can  be  no  doubt  that  the  American 
cases  are  all  to  this  effect,  and  that  the 
English  decisions  are  only  different  as 
tending  to  enlarge  the  complainant's 
right. 

What  may  be  accepted  as  the  present 
position  of  the  courts  of  both  countries 
will  be  found  in  the  opinion  of  Lord 
Justice  James  in  Thorley's  Cattle  Food 
Co.  v.  Massam,  671,  decided  during  the 
year  1880,  the  full  text  of  which  is 
published  in  this  volume.  It  will  be 
remarked  that  the  learned  judge  nega- 
tives many  popular  interpretations  of 
familiar  cases,  and  that  his  conclusions 
carry  the  question  under  discussion  to 
a  point  which,  if  advanced,  is  only  in 
line  with  the  intimations  of  the  House 
of  Lords,  as  expressed  in  a  number  of 
recent  cases. 


66 


EDELSTEN  V.  VICK. 

118.  Farina  v.  Gebhardt. 
March  23,  1853.     Wood,  V.  C.—  Cited  3  Eq.  Rep.  891  ;  1  K.  §•  /.  517. 

THE  plaintiff  being  a  manufacturer  of  Eau  de  Cologne, 
which  he  sold  in  bottles  bearing  certain  special  labels,  the  de- 
fendant imitated  those  labels. 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendant  from  infringing  his  rights  refused,  on  the  ground 
of  the  plaintiff's  delay  in  making  his  application.  The  de- 
fendant subsequently  submitted  to  pay  his  own  costs,  and 
undertook  to  refrain  from  future  infringements.1 


119.  Edelsten  v.  Vick. 
April  16,  1853.     Wood,  V.  C.  —  11  Hare,  78  ;  1  Eq.  Rep.  413;  18  Jur.  7. 

THE  plaintiffs  being  the  successors  in  business  of  the  origi- 
nal patentees  of  "  Tayler  $  (70. 's  Patent  Solid-headed  Pins," 
continued,  after  the  expiration  of  the  patent,  to  use  on  their 
packets  of  pins  labels  printed  from  the  old  blocks,  describing 
the  pins  as  "patent." 

The  defendants  made  pins  and  sold  them  in  packets  made 
up  and  labelled  similarly  to  the  plaintiffs',  except  that  they 
added  "  J.  Vick,  from  the  late" 

On  motion  by  the  plaintiffs  for  an  injunction  to  restrain 
the  defendants  from  so  doing  : 

Held)  (1.)  that  the  plaintiffs  were  entitled  to  an  injunction 
to  restrain  a  palpable  fraud  ;  (2.)  that  the  defendants  could 
not  be  absolutely  restrained  from  representing  that  their  pins 
were  made  according  to  Tayler's  expired  patent,  but  that  they 
must  not  do  so  in  such  a  way  as  to  deceive ;  (3.)  that  the 
plaintiffs  were  not  disentitled  by  reason  of  their  continued 
user  of  the  word  "  patent,"  since  there  had  been  a  patent, 
and  the  word  had  not  been  first  adopted  after  its  expiration. 

"  It  does  not  follow,  because  upon  the  expiration  of  the  patent  the 
article  and  its  known  description  become  open  to  all,  that  therefore 
1  See  McLean  v.  Fleming,  580. 

67 


STOKES  V.  LANDGRAFF. 

all  would  become  entitled  to  use  the  label  by  which  the  patentees  had 
been  accustomed  to  distinguish  their  goods.  The  public  may  have 
acquired  confidence  in  that  particular  label,  and  that  confidence  may 
have  given  a  value  to  it  which  the  patentees  may  be  entitled  to  have 
protected  after  the  expiration  of  their  patent."  * 


120.   R.  v.  Dundas. 
1853.     York  Assizes:  Erie,  J.  — 6  Cox,  380. 

ON  an  indictment  for  obtaining  money  by  false  pretences, 
the  prisoner  having  induced  the  prosecutor  to  buy  blacking  of 
him,  contained  in  bottles  labelled  "  Everett's  Premier  "  (that 
being  the  name  of  an  article  manufactured  by  a  London 
maker  of  high  reputation),  on  a  representation  that  the 
blacking  was  Everett's  and  himself  Everett's  agent : 

Held,  (1.)  that  an  offer  to  sell  on  sale  or  return  was  imma- 
terial, the  actual  bargain  being  for  cash  ;  (2.)  that  it  was  un- 
important whether  the  prisoner's  name  were  or  were  not  Ever- 
ett, as  he  asserted,  if  he  had  acted  fraudulently  ;  (3.)  that 
the  jury  must  decide  whether  or  not  certain  differences  be- 
tween the  labels  on  the  prisoner's  bottles  and  those  on  the 
genuine  ones  were  mere  small,  colorable  differences,  and  in- 
tended to  deceive. 

Guilty.  —  Two  years'  imprisonment. 


121.    Stokes  v.  Landgraff. 

October,  1853;   September,  1854.     N.  Y.  Sup.  Ct.  —  ll  Barb.  608;  R. 

Cox,  137. 

THE  plaintiff  being  a  manufacturer  of  glass,  which  he  sold 
under  the  names  "  Gralen"  "  Lake"  "  Cylinder"  "  Wayne" 
"  New  York"  the  defendants  made  and  sold  other  glass  under 
the  same  names. 

On  motion  by  the  defendants,  injunction,  which  had  been 
granted  on  motion  by  the  plaintiff  to  restrain  them  from  so 
doing,  dissolved,  on  the  ground  that  those  words  were  indica- 
tive, not  of  the  manufacturer,  but  of  the  quality  of  the  article. 

1  See  Leather  Cloth  Co.  v.  American  Leather  Cloth  Co.  223. 
68 


SHRIMPTON  V.  LAIGHT. 

Per  Strong,  J.  "  The  principle  is  well  settled  that  a  manufact- 
urer may,  by  priority  of  appropriation  of  names,  letters,  marks,  or 
symbols  of  any  kind  to  distinguish  his  manufactures,  acquire  a  prop- 
erty therein  as  a  trade-mark In  respect  to  words,  marks,  or 

devices,  which  do  not  denote  the  goods,  or  property,  or  particular 
place  of  a  person,  but  only  the  nature,  kind,  or  quality  of  the  articles 
in  which  he  deals,  a  different  rule  prevails.  No  property  in  such 
words,  marks,  or  devices  can  be  acquired." 


122.  Hoffman  v.  Duncan. 
November  2,  1853.     Wood,   V.  C.  —  Seton,  4th  ed.  256. 

PARTNEKSHIP  suit.  Injunction  granted,  after  the  dissolu- 
tion of  the  firm  of  "  Hoffman  £  Duncan"  to  restrain  one  of 
the  former  partners  from  the  use  of  the  name  of  the  part- 
nership. 

« 

123.  Shrimpton   v.  Laight. 
January  19,  1854.     Romilly,  M.  R.  —  18  Beav.  164. 

THE  plaintiffs  being  the  makers  of  a  needle  which  they 
called  "  the  graduated,  grooveless,  drill-eyed,  ground  down," 
and  sold  in  packets  labelled  with  those  words,  and  a  state- 
ment that  they  were  "  invented  and  made  solely  by  Shrimp- 
ton  £  Hooper,  at  the  Albion  Needle  Works,  Studley"  the 
defendant,  authorized,  as  he  alleged,  by  one  David  Shrimp- 
ton  Turvey,  who  was  not  a  needle-maker,  began  to  sell  other 
needles  in  packets  similarly  labelled,  except  that  "  Shrimpton 
$•  Hooper  "  and  "Albion  Needle  Works  "  were  omitted,  and 
"  Shrimpton  Turvey  "  substituted. 

On  motion  by  the  plaintiffs,  injunction  granted  to  restrain 
the  defendant  from  imitating  the  plaintiffs'  labels. 

"  The  way  in  which  the  court  deals  with  these  cases  is,  not  to 
see  whether  manufacturers  themselves  would  distinguish  them,  but 
whether  the  public,  who  may  be  more  easily  misled,  would  probably 
be  deceived." 

69 


LEMOINE  v.  GANTON. 

124.  Taylor  v.  Taylor. 

January  19,  1854.     Wood,  V.  C.  —  2  Eq.  Rep.  290;  23  L.  J.  Ch.  255;  22 

L.  T.  271. 

THE  plaintiffs  being  manufacturers  of  thread,  which  they 
sold  on  reels  bearing  labels,  on  which  the  words  '•'•Taylor's 
Persian  Thread  "  were  prominent,  the  defendant  began  to 
sell  thread  similarly  put  up,  except  that  before  the  name 
"  Taylor  "  he  inserted  "  Sam."  instead  of  "  J.  W" 

On  motion  by  the  plaintiffs,  injunction  granted  to  restrain 
the  defendant  from  selling  thread  on  reels  labelled  with 
that  name,  or  any  other  colorable  imitation  of  the  plaintiffs' 
labels. 

"  In  every  case  the  court  must  ascertain  whether  the  differences 
are  made  bondjide  in  order  to  distinguish  the  one  article  from  the 
other,  whether  the  resemblances  and  the  differences  are  such  as  nat- 
urally arise  from  the  necessity  of  the  case,  or  whether,  on  the  other 
hand,  the  differences  are  simply  colorable,  and  the  resemblances  are 
such  as  are  obviously  intended  to  deceive  the  purchaser  of  the  one 
article  into  the  belief  of  its  being  the  manufacture  of  another  per- 
son. Resemblance  is  a  circumstance  which  is  of  primary  importance 
for  the  court  to  consider,  because  if  the  court  finds,  as  it  almost  in- 
variably does  find  in  such  cases  as  this,  that  there  is  no  reason  for 
the  resemblance,  except  for  the  purpose  of  misleading,  it  will  infer 
that  the  resemblance  is  adopted  for  the  purpose  of  misleading." 


125.  Lemoine  v.  Ganton. 
January,  1854.     N.  Y.  C.P.  —  2  E.  D.  Smith,  343  ;  E.  Cox  142. 

THE  plaintiff,  a  French  manufacturer  of  calf-skin  leather, 
adopted  a  new  trade-mark  for  his  leather,  and  discontinued 
the  use  of  his  old  mark.  About  a  year  later  the  defendant 
sold  leather  not  prepared  by  the  plaintiff  bearing  the  plain- 
tiff's discontinued  mark.  Action  for  damages.  A  verdict 
having  been  returned  for  the  plaintiff,  on  motion  for  a  new 
trial,  Held,  that  the  plaintiff  was  entitled  to  recover  damages 

70 


EVANS  v.  HUGHES. 

for  the  defendant's  infringement  of  his  rights,  notwithstand- 
ing that  he  had  discontinued  the  use  of  the  mark. 

Per  Daly,  J.  "The  wrong  and  injury  to  the  plain  tiff  consisted  in 
the  sale  of  calf-skins  falsely  purporting  and  declared  to  be  of  his 
manufacture;  and  it  makes  no  difference  whether  that  object  was 
effected  by  counterfeiting  the  trade-mark  which  he  uses  at  present  or 
one  that  he  formerly  used.  An  injury  results  to  him  in  either  case." 

126.  Gillott  v.  Kettle. 
March,  1854.     N.  Y.  Super.  Ct.  —  3  Duer,  624;  R.  Cox,  148. 

THE  plaintiff  being  a  penmaker,  who  sold  his  pens  in  boxes 
labelled  respectively  with  the  number  "  303  "  or  "  753,"  the 
former  denoting  the  superior,  the  latter  the  inferior  quality, 
the  defendant  removed  the  labels  with  "  753  "  from  the  boxes 
of  inferior  pens,  and  substituted  for  them  labels  imitated  from 
the  labels  used  on  the  boxes  of  superior  pens,  with  "  303." 

On  motion  by  the  plaintiff,  injunction  granted  arid  upheld 
to  restrain  the  defendant  from  so  doing. 

Per  Bosworth,  J.  "  The  fraud  complained  of  consists  in  selling  an 
inferior  article  of  the  plaintiff's  manufacture  as  being  one  of  a  supe- 
rior quality.  The  fraud,  to  the  extent  that  it  may  be  successful,  is 
twofold  :  The  public  is  defrauded  by  being  induced  to  buy  the  infe- 
rior for  the  superior  article.  The  plaintiff  is  defrauded  by  an  unjust 
destruction  of  confidence  that  his  pens  are  put  up  for  sale  and  as- 
sorted with  reference  to  the  quality  indicated  to  dealers  by  the 
labels  on  the  boxes  which  contain  them." 


127.     Evans  v.  Hughes. 
March  30,  1854.     Wood,  V.  C.  —  18  Jur.  691. 

THE  plaintiff  being  the  widow  and  executrix  of  one  of  the 
partners  in  the  firm  of  "  Evans  and  Hughes"  which  was  con- 
stituted under  articles  of  which  one  provided  that,  on  the  de- 
cease of  either  partner,  his  personal  representative  was  to  have 
the  power,  within  three  months,  of  electing  to  continue  his 
share  ;  the  defendant  being  the  surviving  partner  in  the  firm, 

71 


HALL  V.  HALL. 

before  the  expiration  of  the  three  months,  or  election,  began 
to  carry  on  business  in  his  own  name. 

On  motion  by  the  plaintiff,  injunction  granted  to  restrain 
the  defendant,  until  the  expiration  of  the  three  months,  or 
election,  from  carrying  on  the  business  under  any  other  name 
than  that  under  which  it  had  been  carried  on  in  the  lifetime 

of  the  deceased  partner. 

* 

128.  Potter  v.  The  Commissioners  of  Inland  Revenue. 

June  15,  1854.    Exchequer.  —  10  Ex.  147  ;  23  L.  J.  Ex.  345;  18  Jur.  778 ; 
23  L.  T.  269;  2  W.  R.  561. 

CASE  stated  by  the  Commissioners  of  Inland  Revenue. 

Held,  that  the  assignment  by  deed  of  the  good-will  of  a 
trade  was  a  conveyance  of  property  within  the  Stamp  Act, 
13  &  14  Viet.  c.  97,  and  not  of  a  mere  possibility,  and  was 
therefore  subject  to  ad  valorem  duty. 

Per  Pollock,  C.  B.  "  Very  frequently  the  good-will  of  a  business 
or  profession,  without  any  interest  in  laud  connected  with  it,  is  made 
the  subject  of  sale,  though  there  is  nothing  tangible  in  it ;  it  is  merely 
the  advantage  of  the  recommendation  of  the  vendor  to  his  connections, 
and  his  agreeing  to  abstain  from  all  competition  with  the  vendee. 
Still,  it  is  a  valuable  thing  belonging  to  himself,  and  which  he  may 
sell  to  another  for  a  pecuniary  consideration." 


129.  Hall  v.  Hall. 
March  5,  1855.  Romilly,  M.  R.  —  20  Beav.  139. 

PARTNERSHIP  suits.  Cross-suits  having  been  commenced 
by  each  of  the  partners  in  a  brewing  business  carried  on  un- 
der articles  of  partnership  which  provided  that  the  surviving 
or  continuing  partner,  in  case  of  the  death  or  retirement  of 
the  other,  should  have  the  option  of  taking  over  the  share  of 
the  deceased  or  retiring  partner  in  the  partnership  "  property, 
credits,  and  effects,"  and  it  having  been  agreed  that  the  part- 
nership should  be  dissolved,  and  that  the  continuing  partner 
should  take  over  the  partnership  "  stock  in  trade  and  effects  " 
at  a  valuation  : 

72 


FARINA  V.  SILVEKLOCK. 

Held,  that  the  good-will  was  not  to  be  taken  into  account 
and  valued  as  being  included  in  the  partnership  "  property 
credits,  and  effects,"  or  "  stock  in  trade  and  effects." 

130.  Farina  v.  Silverlock. 

June  6,  1855;  July  9,  1856;  June  1,  1858.  Wood,  V.C.  —  l  K.frJ.  509; 
3  Eq.  Rep.  883  ;  24  L.  J.  Ch.  632;  25  L.  T.  211 ;  3  W.  R.  532.  Lord 
Cranworth,  C.  —  6  De  G.,  M.  if  G.  214  ;  26  L.  J.  Ch.  11  ;  2  Jur.  N.  S. 
1008;  27 L.  T.  277;  4  W.  R.  731  ;  52  Leg.  Ot>s.  342.  Queen's  Bench.— 
SOL.  T.  242;  31  L.  T.  99.  Wood,  V.  C.  (after  trial  at  law).  —  4  K.  Sf 
J.  650. 

THE  plaintiff  being  a  manufacturer  of  Eau  de  Cologne, 
which  he  sold  in  bottles  bearing  a  special  label,  with  his  sig- 
nature and  other  particulars,  the  defendant,  a  printer,  printed 
and  sold  similar  labels. 

On  motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendant  from  so  doing,  Held,  by  the  V.  C.,  that  the  plain- 
tiff was  entitled  to  an  injunction  to  restrain  the  defendant 
from  "  scattering  over  the  world  the  means  of  enabling  par- 
ties to  commit  frauds  upon  the  plaintiff." 

Held,  by  the  Lord  Chancellor,  that  since  the  labels  might 
be  printed  for  a  legitimate  purpose,  viz.  to  replace  genuine 
labels  on  genuine  goods,  which  had  become  obliterated,  the 
injunction  must  be  dissolved,  liberty  being  given  to  bring  an 
action. 

An  action  having  been  brought,  and  having  resulted  in  a 
verdict  for  the  plaintiff,  which  was  upheld  by  the  Court  of 
Queen's  Bench,  injunction  restored. 

Per  Wood,  V.  C.  (1  K.  &  J.  515).  "  No  man  has  a  right  to  sell 
wares  with  a  trade-mark  upon  them  which  has  been  used  to  desig- 
nate the  wares  of  the  party  complaining.  A  man  may  acquire,  not 
an  absolute  kind  of  property,  but  that  kind  of  right  in  a  trade-mark 
which  entitles  him  to  say,  '  No  one  shall  sell  goods  of  his  own  making 
marked  with  my  trade-mark,' which  I  have  been  in  the  habit  of  using 
in  my  trade,  so  as  to  make  people  think  that  they  are  of  my  manu- 
facture.' " 

Per  Lord  Cranworth,  C.  (6  De  G.,  M.  &  G.  217).  "  This  right 

73 


FARINA  V.  SILVERLOCK. 

cannot  be  properly  described  as  a  copyright;  it  is  in  fact  a  right  which 
can  be  said  to  exist  only  and  can  be  tested  only  by  its  violation ;  it  is 
the  right  which  any  person  designating  his  wares  or  commodities  by 
a  particular  trade-mark,  as  it  is  called,  has  to  prevent  others  from 
selling  wares  which  are  not  his,  marked  with  that  trade-mark,  in 
order  to  mislead  the  public,  and  so  incidentally  to  injure  the  person 

who  is  owner  of  the  trade-mark I  apprehend  that  the  law  is 

perfectly  clear,  that  any  one  who  has  adopted  a  particular  mode  of 
designating  his  particular  manufacture  has  a  right  to  say,  not  that 
other  persons  shall  not  sell  exactly  the  same  article,  better  or  worse, 
or  an  article  looking  exactly  like  it,  but  that  they  shall  not  sell  it  in 
such  a  way  as  to  steal  (so  to  call  it)  his  trade-mark,  and  make  pur- 
chasers believe  that  it  is  the  manufacture  to  which  that  trade-mark 
was  originally  applied." 

P.  219.  "  I  think  it  clear  that  any  man  would  be  at  liberty,  if 
it  was  writing  instead  of  printing,  to  write,  or  if  he  was  capable  of 
printing  and  engraving,  to  print  and  engrave  for  himself,  a  label 
being  a  colorable  imitation  of,  or  a  copy  of  the  plaintiff's  label,  and 
to  put  it  on  Eau  de  Cologne,  being  the  Eau  de  Cologne  of  the  plain- 
tiff." * 

1  It  is  not  to  be  doubted  that  under  articles  of  merchandise  of  the  same  class 
certain  circumstances  it  is  open  to  a  as  those  upon  which  it  is  used  by  the  pro- 
printer  to  manufacture  and  sell  labels  prietor,  any  device  or  symbol  which  by 
which  embody  the  name  or  mark  of  a  its  resemblance  to  the  established  trade- 
manufacturer;  but  where  it  is  made  to  mark  will  be  liable  to  deceive  the  pub- 
appear  that  the  actual  or  constructive  lie  and  lead  to  the  purchase  and  use  of 
purpose  is  to  enable  a  party  or  the  pub-  that  which  is  not  the  manufacture  of 
lie  to  violate  a  trade-mark,  an  injunc-  the  proprieter,  believing  it  to  be  his." 
tion  will  be  granted.  The  production  The  distinction  would  seem  to  be  that 
by  the  printer  of  a  fac-simile  of  a  label  where  the  facts  of  the  case  show  that 
embodying  the  trade-mark  is  fraudulent  the  printer  of  the  labels  contemplated 
whenever  the  label  is  sold,  actually  or  their  use  upon  goods  not  made  by  the 
constructively,  for  use  upon  other  than  owner  of  the  mark,  the  court  will  inter- 
the  goods  of  the  owner  of  the  trade-  fere  whatever  the  intent ;  but  where  the 
mark.  In  Colman  v.  Crump,  579,  Judge  purpose  was  that  they  should  be  hon- 
Allen,  writing  for  the  Court  of  Appeals  estly  used  in  such  manner  as  to  be  tan- 
of  New  York,  said  :  "It  is  an  infraction  tamount  to  an  application  of  the  mark 
of  that  right  (the  right  to  a  trade-mark)  by  its  owner,  the  courts  will  decline  to 
to  print  or  manufacture,  or  put  on  the  interfere, 
market  for  sale  and  sell  for  use,  upon 

74 


CHAPPELL  V.  SHEARD. 

131.  Morris  v.  Moss. 
July  24,  1855.     Romilly,  M.  R.—  25  L.  J.  Ch.  194. 

ADMINISTEATION  suit.  Held,  that  the  good-will  of  a  busi- 
ness which  had  been  carried  on  by  a  wife  before  marriage, 
and  afterwards  by  the  husband  and  wife,  on  the  death  of  the 
husband  survived  to  the  wife,  and  that  she  might  dispose  of 
it  and  receive  the  purchase  money  for  her  own  benefit,  even 
though  it  was  carried  on  upon  leasehold  premises  forming  a 
part  of  the  husband's  estate,  and  of  which  he  had  disposed  by 
his  will. 

132.  Chappell  v.  Sheard. 

August  2,  1855.      Wood,  V.  C.  —  2  K.  &f  J.  117  ;  1  Jur.  N.  S.  996  ;  3  W. 

R.  646. 

THE  plaintiffs  being  the  publishers  and  proprietors  of  a 
song  entitled  "  Minnie"  which  was  published  with  a  special 
kind  of  title-page,  the  defendant  published  another  song  un- 
der the  name  of  "  Minnie  Dale"  with  a  title-page  copied 
from  the  plaintiffs'. 

Suit  for  an  injunction.  Held,  (1.)  that  the  song  was  known 
to  the  purchasing  public  by  four  characteristics :  the  names 
of  the  song,  of  the  singer,  of  the  composer,  of  the  publisher; 
(2.)  that  a  statement  on  the  plaintiffs'  title-page  "  written  by 
George  Liriley"  he  having  written  the  words,  though  not 
composed  the  music,  did  not  disentitle  the  plaintiffs,  though 
Linley  was  better  known  as  a  composer  than  as  a  poet ;  (3.) 
that  the  plaintiffs  were  not  disentitled  by  their  own  delay, 
they  having  first  become  acquainted  with  the  piracy  on  June 
18  ;  (4.)  and  that  the  injunction  must  be  granted.1 

i  See  Hogg  v.  Kirby,  10. 

75 


AUBIN  v.  HOLT. 


133.    Heath  v.  Wright. 

October,  1855.      U.  S.  C.  C.  E.  Dt.  of  Penn :  Kane,  J.  —  3   Wall.  Jr.  ; 

R.  Cox,  154. 

THE  plaintiff  preparing  and  selling  a  toilet  compound 
under  the  name  of  "  Kathairon"  the  defendant  sold  another 
preparation  under  the  same  name. 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendant  from  so  doing  refused  on  the  ground  that  the  mis- 
statements  and  exaggerations  contained  in  the  labels  on  the 
plaintiff's  own  bottle  were  such  as  to  disentitle  him  to  any 
relief.1 


134.  The  Merrimack  Manufacturing  Co.  v.  Garner. 

November,  1855.     N.  Y.  C.P.  —  2  Abb.  Pr.  318  ;  4  E.  D.  Smith,  387  ;  R. 

Cox,  155. 

THE  plaintiffs  being  manufacturers  of  cotton  prints,  which 
they  sold  labelled  with  the  words  "  MerrimacJc  Prints,  Fast 
Colors,  Lowell,  Mass."  the  defendants  sold  other  cotton  goods 
labelled  with  the  words  "English  Free  Trade,  Merrimack 
Style,  Warranted  Fast  Colors" 

Suit  for  an  injunction.  Injunction  which  had  been  granted, 
on  motion  by  the  plaintiffs,  to  restrain  the  defendants  from 
so  doing,  dissolved,  on  the  ground  that  the  infringement  was 
not  sufficiently  clear  for  an  injunction  to  be  granted  without 
a  preliminary  trial  at  law.2 


135.    Aubin  v.  Holt. 

November  23,  1855.     Wood,  V.  C.  —  2  K.  £  /.  66  ;  25  L.  J.  Ch.  36;  4 

W.  R.  112. 

THE  plaintiff  and  defendant,  being  the  members  of  the 
firm  of  "  Holt  $  Aubin"  solicitors,  having  agreed,  upon  the 
dissolution  of  the  partnership,  that  the  defendant  should  con- 

1  See  Pidding  v.  How,  60.  2  See  Amoskeag  Man.  Co.  v.  Spear, 

100. 

76 


CHAPPELL  V.  DAVIDSON. 

tinue  to  carry  on  the  business  in  the  old  name  after  the  dis- 
solution, he  paying  a  certain  annuity  to  the  plaintiff,  the  re- 
tiring partner,  the  defendant  failed  to  pay  the  annuity  in 
accordance  with  the  terras  of  the  agreement. 

Suit  for  specific  performance  of  the  agreement.  Held,  that 
the  agreement  was  not  void  as  being  against  public  policy, 
and  that  specific  performance  must  be  granted. 


136.    Chappell  v.  Davidson. 

November  26,  1855;  January  11,  1856.      Wood,  V.  C.  —  2  K.  Sf  J.  123; 
Knight  Bruce  and  Turner,  L.  JJ.  —  SDe  G.,  M.  Sf  G.  1. 

THE  plaintiffs,  being  the  publishers  and  proprietors  of  a 
song  called  "  Minnie"  the  defendant  published  another  song 
under  the  name  of  "  Minnie,  dear  Minnie,"  with  a  title-page 
copied  from  that  of  the  plaintiffs'  song. 

On  motion  by  the  plaintiffs  to  continue  an  injunction  which 
had  been  granted  to  restrain  the  defendant  from  so  doing : 
Held,  by  the  V.  C.,  (1.)  that  the  plaintiffs  were  entitled  to 
an  injunction  without  a  preliminary  trial  at  law ;  (2.)  that 
the  plaintiffs  were  not  disentitled  by  reason  of  having  placed 
on  their  title-page  the  words  "  written  by  George  Linley,"  he 
being  a  well-known  composer,  —  the  fact  being  that  he  had 
written  the  words,  but  not  composed  the  music ;  (3.)  that  the 
defendant  could  not  escape  his  liability  by  instructing  his 
shopmen  to  inform  customers  of  the  facts,  since  their  state- 
ments would  not  pass  on  to  subsequent  purchasers  ;  (4.)  that 
the  defendant,  having  insisted  on  his  right  of  publication,  and 
refused  to  submit,  must  pay  costs. 

Held,  by  the  L.  JJ.,  that  the  injunction  ought  to  be  con- 
tinued only  on  the  terms  of  the  plaintiffs'  undertaking  to 
bring  an  action,  and  to  be  answerable  in  damages.1 
1  See  Hogg  v.  Kirby,  10. 

77 


WALTON  V.  CROWLEY. 

137.  Christy  v.  Murphy. 

February,  1856.      N.   Y.  Sup.   Ct. :  Clerke,  J.—ll  How.  Pr.  77;  R. 

Cox,  164. 

THE  plaintiff  being  the  original  founder  of  the  "  Christy's 
Minstrels"  during  a  temporary  discontinuance  of  his  perform- 
ances the  defendants,  most  of  whom  had  been  in  his  service, 
began  to  perform  under  that  name. 

On  motion  by  the  plaintiff,  injunction  granted  to  restrain 
the  defendants  from  so  doing,  notwithstanding  that  the  plain- 
tiff's performances  were  for  the  time  being  in  abeyance  ;  and 
Held,  that  even  if  the  defendants  could  have  proved  a  license 
from  the  plaintiff  to  use  the  name,  unless  they  could  also 
prove  it  to  be  irrevocable,  they  would  have  had  no  right  to 
continue  the  use  of  the  name  one  moment  after  the  plaintiff 
had  signified  his  intention  to  withdraw  the  permission.1 


138.  Walton  v.  Crowley. 

March,  1856.     C7.  S.  C.  C.  S.  Dt.  of  N.  Y.:  Belts,  J.—  3  Bl.  C.  C.440; 

R.  Cox,  166. 

THE  plaintiff  being  the  sole  vendor  in  America,  under  an 
exclusive  contract  with  an  English  firm,  of  the  needles  made 
by  that  firm,  the  defendant  sold  other  needles  with  trade- 
marks similar  to  those  on  the  plaintiff's  needles. 

On  motion  by  the  plaintiff,  injunction  granted  to  restrain 
the  infringement  of  the  trade-marks  on  the  needles  made  in 
England  and  sold  by  him. 

"  The  plaintiff  was  not  the  inventor  of  this  label  or  trade-mark,  nor 
the  one  who  originally  adopted  it,  but  he  is  the  assignee  of  it,  and  of 
the  good-will  of  the  trade.  He  stands,  thus,  in  the  same  relation  to 
the  defendant  as  his  assignor  would." 

"  A  tradesman,  to  bring  his  privilege  of  using  a  particular  mark 

under  the  protection  of  equity,  is  not  bound  to  prove  that  it  has  been 

copied  in  every  particular  by  another.     It  is  enough  for  him  to  show 

that  the  representations  employed  bear  such  a  resemblance  to  his  as 

1  See  Booth  v.  Jarrett,  524. 

78 


LAWSON  V.  THE  BANK  OF  LONDON. 

to  be  calculated  to  mislead  the  public  generally  who  are  purchasers 
of  the  article,  and  to  make  it  pass  with  them  for  the  one  sold  by  him. 
If  the  indicia  or  signs  used  tend  to  that  result,  the  party  aggrieved 
will  be  allowed  an  injunction  staying  the  aggression  until  the  merits 
of  the  case  can  be  ascertained  and  determined." 


139.   Wedderburn  v.  Wedderburn. 

April  7,  1856.     Romilly,  M.  R.  —  22  Beao.  84;  25  L.  J.  Ch.  710;  2  Jur. 
N.  S.  674;  28  L.  T.  4. 

PARTNERSHIP  suit. 

Held,  that  the  plaintiffs,  being  the  representatives  of  a  de- 
ceased partner  in  a  partnership  business,  carried  on  under 
articles  which  provided  that  the  good-will  of  the  business 
should,  on  the  death  of  one  partner,  belong  to  the  survivors, 
were  not  entitled  to  share  in  profits  attributable  to  the  good- 
will ;  though,  in  the  absence  of  express  agreement,  good-will 
was  partnership  assets. 

22  Beav.  p.  104.  "  Good- will  manifestly  forms  a  portion  of  the 
subject  matter  which  produces  profits,  which  constitutes  partnership 
property,  and  which  is  to  be  divided  between  the  surviving  partners 
and  the  estate  of  the  deceased  partner,  according  to  the  terms  of  the 
contract,  and  when  that  is  silent,  according  to  their  shares  in  the  con- 
cern. There  is  considerable  difficulty  in  defining  accurately  what  is 
included  under  this  term  good-will.  It  seems  to  be  that  species  of 
connection  in  trade  which  induces  customers  to  deal  with  a  particular 
firm I  am  of  opinion  that,  both  on  principle,  on  the  author- 
ity of  the  decided  cases,  and  on  the  ordinary  rules  of  common  sense, 
I  must,  whenever  there  is  a  reputation  and  connection  in  business 
constituting  good-will,  treat  that  as  part  of  the  assets  of  the  concern." 

14O.  Lawson  v.  The  Bank  of  London. 

April  22,  1856.     Common  Pleas.  —  18  C.  B.  84  ;  25  L.  J.  C.  P.  188  ;  2 
Jur.  N.  S.  716  ;  27  L.  T.  134  ;  4  W.  R.  481. 

THE  plaintiff  having  established  a  bank  in  London  called 
"  The  Bank  of  London"  the  defendant  bank  commenced  busi- 
ness under  the  same  name. 

79 


PROWETT  V.  MORTIMER. 

Action  on  the  case.  On  demurrer,  Held,  that  it  was  a 
fatal  objection  that  there  was  no  averment  in  the  declaration 
that  the  plaintiff  had  ever  carried  on  the  business  of  a  banker 
at  his  bank,  since,  from  that  omission,  it  disclosed  no  cause  of 
action,  and  that  the  demurrer  must  be  allowed. 

Per  Willes,  J.,  p.  94.  "  In  any  way  of  reading  this  declaration, 
one  cannot  glean  from  it  that  the  plaintiff  had  ever  carried  on  the 
business  of  a  banker.  If  that  had  been  averred  in  the  declaration, 
and  it  had  been  shown  that  the  defendants  carried  on  their  business 
under  the  same  name,  for  the  purpose  of  making  it  to  be  believed  that 
it  was  the  plaintiff's  business,  then  the  question  whether  a  corporation 
could  as  such  be  liable  for  such  a  fraud  would  have  arisen.  I  am  not 
prepared  to  say  that  they  would  not  be  liable  if  the  cause  of  com- 
plaint were  properly  alleged.  They  would  have  capacity  to  do  the 
act,  and  might  possibly  be  responsible  for  its  consequences." 

P.  93.  "  No  action  could,  I  apprehend,  be  maintained  for  the 
sale  of  goods  branded  or  stamped  with  another  manufacturer's  mark, 
which  mark  had  never  been  put  forth  to  the  world  by  the  party  com- 
plaining of  the  misuser  of  it." 


141.  Prowett  v.  Mortimer. 

May  3,  1856.  Stuart,  V.  C.  —  2  Jur.  N.  S.  414  ;  27  L.  T.  132 ;  4  W.R. 

519. 

THE  plaintiff  having  become  by  purchase  the  proprietor  of 
The  Britannia  newspaper,  incorporated  it  with  another  paper 
called  The  John  Bull,  and  issued  the  combined  paper  as  The 
John  Bull  and  Britannia,  and  the  defendant,  being  the  for- 
mer printer  and  publisher  of  The  Britannia,  began  to  publish 
a  new  paper  under  the  name  of  The  True  Britannia,  as  an 
imitation  and  continuation  of  The  Britannia. 

On  motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendant  from  so  doing  : 

Held,  that  the  plaintiff,  in  the  circumstances  of  the  case,  was 
not  disentitled  by  the  fact  that  he  was  not  registered  at  the 
Stamp  Office  as  the  proprietor  of  either  newspaper,  and  that 
an  injunction  must  be  granted  to  restrain  the  defendant  from 

80 


SAMUEL  V.  BERGER. 

publishing  his  paper,  or  any  other  paper,  as  a  continuation 
of  the  plaintiff's  paper,  and  from  soliciting  custom  as  for  the 

plaintiff's  paper.1 

« 

142.    Stewart    v.  Smithson.  • 

May,  1856.   N.  Y.  C.P.  —  l  Hilt.  119;  R.  Cox,  175. 

THE  plaintiffs  being  manufacturers  of  thread,  which  they 
sold  under  a  trade-mark  consisting  of  the  words  "  Hall  $• 
Moody**  patent  thread,  Barnsley"  and  "  Grant  <$•  Wilson's 
celebrated  patent  thread,  Berwick"  the  defendants  sold  other 
thread  similarly  marked. 

Action  for  an  injunction  and  an  account.  Motion  by  the 
defendants  for  leave  to  amend  their  answer  refused,  011  the 
ground  that  the  intended  amendments,  to  the  effect  that  the 
plaintiffs'  thread  had  never  been  manufactured  by  any  such 
persons  as  those  by  whom  it  purported  to  have  been  manu- 
factured, and  that  no  patent  for  the  thread  had  ever  existed, 
if  true,  would  constitute  no  defence  to  the  action. 


143.    Samuel  v.  Berger. 

December,  1856.    N.  Y.  Sup.  Ct. :  Davies,  J.  —  24  Barb.  163 ;  13  How.  Pr. 
342  ;  4  Abb.  Pr.  88;  R.  Cox,  178. 

THE  plaintiff  being  a  watchmaker  who  had  purchased  from 
another  watchmaker,  named  Brindle,  the  exclusive  right  to 
stamp  on  his  own  watches  the  name  of  the  latter,  which  had 
acquired  a  reputation,  the  defendants  sold  other  watches  made 
by  Brindle,  before  the  sale  to  the  plaintiff,  and  stamped  with 
his  name. 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendant  from  so  doing   refused,  with  costs,  since  to  have 
granted  it  would  have  been  to  protect  the  sale  of  the  spurious 
article,  and  restrain  that  of  the  genuine. 
1  See  Hogg  v.  Kirby,  10. 
6  81 


FETRIDGE  V.  MERCHANT. 


144.  Fetridge  v.  "Wells. 

January,  1857.     N.  Y.  Super.  Ct.  :  Duer,  J.  —  ±Abb.  Pr.  144;   13  How. 
Pr.  385;  R.  Cox,  188. 


plaintiff  being  the  proprietor  of  a  cosmetic  called  "  The 
Balm  of  Thousand  Flowers"  the  defendants  began  to  prepare 
and  sell  a  similar  article,  under  the  name  of  "  The  Balm  of 
Ten  Thousand  Flowers" 

Injunction  which  had  been  granted,  on  motion  by  the 
plaintiff,  to  restrain  the  defendants  from  so  doing,  dissolved, 
on  the  ground,  that  (1.)  the  name  did  not  constitute  a  trade- 
mark ;  and  (2.)  the  plaintiff  was  disentitled  by  his  own  mis- 
representations in  the  following  particulars,  namely  :  First, 
though  the  compound  was  not  derived  from  flowers,  the  name 
was  as  above,  and  the  directions  for  use  contained  direct  state- 
ments to  that  effect;  second,  the  plaintiff  in  his  advertise- 
ments falsely  overstated  the  amount  paid  by  him  for  the  secret 
recipe  ;  and,  thirdly,  the  directions  contained  the  most  exag- 
gerated statements  with  respect  to  the  valuable  qualities  of 
the  cosmetic. 

The  defendants  being  in  pari  delicto,  no  costs  given.1 


145.  Fetridge  v.  Merchant. 

January,  1857.    N.  Y.  Super.  Ct. :  Hoffman,  J.  —  lAbb.Pr.  156;  R.  Cox, 

194. 

THE  plaintiff  being  the  proprietor  of  a  cosmetic  called 
"  Balm  of  Thousand  Flowers"  the  defendants  sold  another 
preparation  under  a  similar  name. 

On  motion  by  the  defendants  to  dissolve  an  injunction 
which  had  been  granted  to  restrain  them  from  so  doing  : 

Held,  (1.)  that  the  name  was  a  fancy  name,  and  not  de- 
scriptive; (2.)  but  that  the  injunction  must  be  dissolved,  the 
plaintiff  to  bring  an  action,  on  the  ground  of  the  uncertainty 
of  the  plaintiff's  having  been  the  first  to  appropriate  the 
name.2 

1  See  Pidding  v.  How,  60.  2  See  preceding  case. 

82 


B,  V.  BRYAN. 

"The  further  removed  such  an  appellation  (i.e.  a  fancy  name)  is 
from  actually  representing  the  article  in  question,  the  more  exclusive 
and  decided  becomes  the  right  to  it." 

"  Even  if  the  term  used  may  be  used  in  common,  yet  it  may  be 
employed  by  one  with  such  peculiar  emblems,  colors,  and  devices,  as 
to  give  to  him  an  exclusive  right.  Strictly,  the  right  of  appropriation 
in  such  instances  results  from  the  peculiar  emblems." 


146.  Bloss  v.  Bloomer. 
March,  1857.     N.  Y.  Sup.  Ct.  —  23  Barb.  604;  R.  Cox,  200. 

THE  defendant  purchased  from  the  plaintiffs  a  number  of 
seed  bags,  marked  with  the  plaintiffs'  label,  and  agreed  to  fill 
them  with  seeds  of  good  quality,  but  filled  them  with  inferior 
seeds. 

Action  for  damages.  On  demurrer,  Held,  that  the  plain- 
tiffs were  not  entitled  to  recover  damages  from  the  defendant 
for  injury  caused  to  their  reputation  by  his  so  doing,  since  the 
contract  was  for  a  fraud  upon  the  public,  and  that  the  demur- 
rer must  be  allowed. 

Per  E.  D.  Smith,  J.  "  If  it  be  a  crime  to  counterfeit  labels,  words, 
or  devices  previously  appropriated  to  distinguish  property,  or  to  vend 
goods  thus  stamped,  without  disclosing  the  fact  to  the  purchaser,  it  is 
equally  an  offence  against  the  spirit  of  the  law,  equally  injurious  to 
trade  and  commerce,  and  equally  an  imposition  upon  the  public,  to 
palm  off  spurious  goods  under  cover  of  genuine  labels  and  devices. 
Contracts  to  do  this  are  clearly  against  public  policy,  and  should  not 
be  upheld  and  enforced  by  the  courts." 


147.  R.  v.  Bryan. 

May  11,  1857.     C.  C.  R.—D.Sc  B.  265;  7  Cox,  312;  26  L.  J.  M.  C.  84  ; 
3  Jur.  N.  S.  620  ;  45  C.  C.  C.  Sess.  Pap.  529. 

ON  an  indictment  for  obtaining  money  by  false  pretences, 
the  prisoner  having  been  found  by  the  jury  to  have  obtained 
advances  of  money  from  pawnbrokers  on  certain  plated  spoons, 
by  means  of  fraudulent  representations  that  the  spoons  had  as 

83 


PETERSON  V.  HUMPHREY. 

much  silver  on  them  as  Elkington's  A,  and  that  the  founda- 
ations  were  of  the  best  material,  knowing  that  to  be  untrue  : 

Held,  that  the  statement  made  by  the  prisoner  merely 
amounted  to  an  exaggerated  commendation  in  the  course  of 
bargaining,  with  respect  to  a  matter  of  opinion,  and  not  to  a 
deliberate,  misstatement  of  a  matter  of  fact,  and  that  the  con- 
viction must  be  quashed. 


148.    Clark  v.  Clark. 
May,  1857.     N.  Y.  Sup.  Ct.  —  25  Barb.  76  ;  R.  Cox,  206. 

THE  plaintiffs  being  manufacturers  of  thread,  which  they 
sold  in  spools  labelled  with  their  name  and  other  particulars, 
the  defendant  sold  other  thread  labelled  in  a  very  similar 
manner. 

Suit  for  an  injunction.  Injunction,  which  had  been  granted 
on  motion  by  the  plaintiffs,  to  restrain  the  defendant  from 
imitating  the  plaintiff's  trade-marks  on  spool  cotton,  and 
which  had  afterwards  been  dissolved,  restored  in  part,  so  as 
to  restrain  the  use  by  the  defendant  of  his  own  name  (which 
•was  the  same  as  the  plaintiffs')  only  when  so  placed  as  to 
produce  deception,  and  not  absolutely.1 

Per  Mitchell,  J.  "  If  the  wholesale  buyer,  who  is  most  conversant 
with  the  marks,  is  not  misled,  but  the  small  retailer  or  the  consumer 
is,  the  injury  is  the  same  in  law,  and  differs  only  in  degree.  The 
right  of  action  must  exist  for  the  last  as  well  as  for  the  first." 


149.    Peterson    v.  Humphrey. 
May,  1857.    N.  Y.  Sup.  Ct.:  Mitchell,  /.— 4  Abb.  Pr.  394;  R.  Cox,  212. 

AFTER  the  dissolution  of  the  firm  of  "  Peterson  $  Hum- 
phrey "  each  partner  commenced  a  new  business,  and  one,  the 
defendant,  trading  under  the  name  of  "  Humphrey  $•  Co"  at 
the  old  premises,  continued  to  use  the  old  sign  with  the  old 
name  on  the  premises,  without  sufficient  alterations  to  show 
the  change  in  the  firm. 

1  See  Burgess  v.  Burgess,  117. 

84 


WILLIAMS  V.  JOHNSON. 

Injunction  granted  to  restrain  the  defendant  from  so  doing, 
and  also  to  restrain  him  from  publishing  any  notice  to  the 
effect  that  he  was  carrying  on  the  business  of  the  old  firm  ; 
but  the  defendant  to  be  at  liberty  to  state  that  he  had  been 
a  member  of  the  old  firm,  and  was  carrying  on  the  same  kind 

of  business  as  formerly. 

« 

150.  "Williams   v.  Johnson. 
1857.     S.  C.  N.  Y.  General  Term.  —  2  Bos.  1. 

PLAINTIFFS  were  manufacturers  of  soap,  which  they  sold 
under  the  name  of  "  Crenuine  Yankee  Soap,"  using  a  particu- 
lar style  of  wrapper,  form  of  cake,  hand-bill,  etc. ;  defendant 
put  up  his  soap  in  a  similar  manner  with  slight  variations.  It 
appeared  that  there  was  sufficient  doubt  about  the  exclusive 
right  of  the  plaintiffs  to  use  the  words  "  Crenuine  Yankee  "  to 
prevent  their  being  protected,  but  an  injunction  was  granted 
restraining  the  defendant  from  using  the  simulated  wrapper, 
etc.,  complained  of. 

Per  "Woodruff,  J.  "  They  (plaintiffs)  have  adopted  (in  reference 
to  their  manufacture  of  an  article  which  any  and  every  one  may  man- 
ufacture and  sell  if  he  pleases)  a  form  and  size  of  cake,  a  partic- 
ular mode  of  covering  and  packing,  a  combination  of  three  labels  on 
each  cake,  an  exterior  hand-bill  upon  the  box,  and  have  so  arranged 
the  whole  as  to  suggest  to  any  one  desiring  to  purchase  their  soap 
upon  an  inspection,  that  the  article  is  theirs  and  made  by  them.  All 
this  the  defendant  has  copied  with  an  exactness  which  is  calculated  to 
deceive  even  the  wary,  much  more  to  entrap  those  who  are  not  in 
the  exercise  of  a  rigid  scrutiny."  After  citing  a  number  of  cases,  it 
is  said :  "  We  have  no  hesitation  in  saying  that  his  (defendant's)  acts 
are  a  clear  infringement  of  the  plaintiffs'  rights.  He  has  copied  the 
form,  appearance,  color,  style,  and  substantial  characteristics,  in  all 
respects,  which  distinguish  the  plaintiffs'  goods."  l 

1  This  case  is  generally  regarded  as  a  specific  trade-mark  should  he  infringed, 

leading  decision  going  to  sustain  the  hut  it  is  sufficient  that  the  court  is  sat- 

doctrine  of  the  later  cases,  that,  as  said  isfied  there  was  an  intent  on  the  part  of 

by  Judge  Clifford  in  McLean  v.  Flem-  respondent  to  palm  off  his  goods  as  the 

ing,  580,  "  it  is  not  necessary,  in  order  goods  of  the  complainant."     Theopin- 

to  give  a  right  to  an  injunction,  that  a  ion  has  been  frequently  cited  as  main- 

85 


THE  COLLINS  COMPANY  V.  BROWN. 


151.  The  Collins  Company  v.  Brown. 

June  10,  1857.     Wood,  V.  C.  —  SK.fr  J.  423;  3  Jur.  N.  S.  929;  30  L.  T. 

62. 

THE  plaintiffs  being  an  American  company  of  edge-tool 
manufacturers,  who  stamped  their  goods  "  Collins  £  Co.,  Hart- 


taining  in  effect  that  where  the  appear- 
ance of  a  peculiar  and  original  package 
has  acquired  through  use  an  understood 
reference  to  the  goods  of  a  manufact- 
urer, and  a  competing  manufacturer 
knowingly  imitates  the  peculiar  charac- 
teristics of  the  package,  with  intent  to 
deceive  the  public,  such  imitation  will 
be  held  to  be  an  infringement  of  the 
rights  of  the  person  first  using  the 
package. 

An  indirect  recognition  of  this  now 
probably  well-settled  doctrine  may,  per- 
haps, be  based  upon  Edelsten  v.  Vick, 
119,  and  other  English  cases,  but  it  can 
hardly  be  said  to  have  found  distinct 
expression  prior  to  the  case  of  Frese  v. 
Bachof,  603,  decided  by  Judge  Wheeler, 
holding  the  United  States  Circuit  Court 
for  the  Southern  District  of  New  York. 
It  there  appeared  that  there  was  a  sim- 
ulation of  a  package  having  peculiar 
characteristics,  which  characteristics  the 
court  protected  by  injunction.  The 
learned  judge  said  :  "  Probably  no  mere 
form  of  a  package  would  ever  alone 
amount  to  a  representation,  capable  of 
deceiving,  that  the  wares  contained  in 
it  were  those  of  any  particular  make  ; 
but  when  the  form  of  these  packages, 
the  color  of  the  wrappers  and  papers 
done  up  with  them,  and  the  form  and 
color  of  the  labels,  are  considered  all 
together,  it  is  quite  apparent  that  when 
they  had  been  so  long  used  by  the  ora- 
tor's firm  for  holding  this  particular 
compound  when  offered  for  sale,  that  the 
mere  appearance  of  the  packages  would 
amount  to  a  representation  that  they 
contained  that  article  of  manufacture. 
It  is  equally  obvious  that  the  very  slight 
changes  made  by  the  defendant  in  the 


general  appearance  of  his  packages 
....  would  not  put  the  general  public 
purchasing  such  articles  on  their  guard, 
and  that  the  use  of  such  packages  for 
a  similar  article  would  amount  to  a 
forcible  representation  that  it  was  the 
same  article  the  orator's  firm  had  been 
accustomed  to  pack  in  that  way."  The 
court  accordingly  directed  that  an  in- 
junction should  be  granted  upon  cer- 
tain amendments  being  made. 

In  the  case  of  Enoch  Morgan's  Sons 
Co.  v.  Schwackhoffer,  665,  decided  in 
the  Supreme  Court  of  New  York, 
Judge  Lawrence  said  :  "  I  am,  there- 
fore, of  the  opinion  that  the  plaintiffs 
are  entitled  to  an  injunction,  restraining 
the  defendant  from  vending  '  Saphia,' 
in  the  blue  packages  in  which  it  is  now 
sold.  By  this  I  do  not  mean  to  be  un- 
derstood as  holding  that  the  defendant 
has  not  the  right  to  manufacture  and 
also  sell  '  Saphia/  nor  to  restrain  him 
from  the  use  of  that  name,  or  of  the 
figure  or  device  upon  the  label.  But  I 
do  intend  that  he  shall  abstain  from 
dressing  his  goods  in  wrappers  so 
closely  resembling  the  plaintiff's  as  to 
enable  him  to  deceive  the  public  and 
perpetrate  a  fraud.  That  he  shall  not 
sell  '  Saphia '  as  and  for  '  Sapolio.' 
In  other  words,  he  must  sell  under  his 
own  colors  and  not  under  those  of  the 
plaintiff." 

In  an  action  by  the  plaintiff  in  the 
case  just  referred  to,  tried  before  Hon. 
Joseph  S.  Bosworth,  an  ex-judge  of  the 
Superior  Court  of  New  York,  as  ref- 
eree, the  principle  was  applied  in  a  very 
advanced  case.  The  learned  referee 
formulated  the  rule  as  follows :  "  There 
was  an  intent  on  the  part  of  the  de- 


86 


THE  COLLINS  COMPANY  V.  COWEN. 


ford  Cast  Steel,  Warranted"  the  defendant,  an  English  maker, 
made  other  goods  with  the  same  stamp. 

Suit  for  an  injunction  and  account.  Demurrer  by  the  de- 
fendant, on  the  ground  of  the  plaintiffs'  alienage,  overruled. 

"  If  a  man  has  been  in  the  habit  of  using  a  particular  mark  for  his 
goods  for  a  long  time,  during  which  no  one  else  has  used  a  similar 
mark,  and  then  another  person  begins  to  use  the  same  mark,  that  can 
only  be  with  a  fraudulent  intent ;  and  any  fraud  may  be  redressed  in 
the  country  in  which  it  is  committed,  whatever  may  be  the  country  of 
the  person  who  has  been  defrauded." 


152.  The   Collins  Company  v.  Cowen. 

June  11,  1857.     Wood,  V.  C.  —  3  K.  §•  J.  428;  3  Jur.  N.  S.  929  ;  29  L. 
T.  245;  30  L.  T.  62;  5  W.  R.  676. 

THE   plaintiffs  being  an  American  company  of  edge-tool 
manufacturers,  who  stamped  their  goods  "  Collins  $  Co.,  Hart- 


fendants  to  mislead  the  public  ;  the 
public  has  been  misled,  and  the  plain- 
tiffs have  been  subjected  to  loss  and 
damage  thereby.  Fraud  and  damage 
are  thus  coupled  together  as  cause  and 
effect." 

Upon  the  same  state  of  facts  the  law, 
as  laid  down  by  ex-judge  Bosworth,  was 
recognized  in  Enoch  Morgan's  Sons  Co. 
v.  Hunkde,  in  the  United  States  Circuit 
Court  for  the  District  of  New  Jersey. 

In  Sawyer  v.  Horn,  decided  by  the 
United  States  Circuit  Court  for  the 
District  of  Maryland,  after  a  careful 
examination  of  the  authorities  the 
court  say  :  — 

"  We  have  come  to  the  conclusion  in 
the  case  before  us,  that  the  respondent 
should  be  enjoined  from  putting  up  his 
goods  in  the  manner  in  which  he  has 
been  doing  as  shown  by  the  exhibit,  or 
in  any  other  manner  so  simulating  the 
form,  color,  labels,  and  appearance 
given  by  the  complainant  to  his  goods 
as  to  mislead  purchasers  into  mistak- 
ing one  for  the  other. 

"  What  we  decide  is,  that  whether 


the  complainant  has  a  trade-mark  or 
not,  as  he  was  the  first  to  put  up  blueing 
for  sale  in  the  peculiarly  shaped  and 
labelled  boxes  adopted  by  him,  and  as 
his  goods  have  become  known  to  pur- 
chasers and  are  bought  as  the  goods  of 
the  complainant  by  reason  of  their  pe- 
culiar shape,  color,  and  label,  no  person 
has  the  right  to  use  the  complainant's 
form  of  package,  color,  or  label,  or  any 
imitation  thereof,  in  such  manner  as 
to  mislead  purchasers  into  buying  his 
goods  for  those  of  the  complainant, 
whether  they  be  better  or  worse  in  qual- 
ity." 

There  are  numerous  cases  which  make 
in  favor  of  the  rule  as  laid  down  in  the 
foregoing  in  which  the  precise  question 
under  discussion  did  not  arise.  If  there 
are  a  few  isolated  instances  which  look 
in  a  different  direction,  a  careful  exam- 
ination will  show  that  they  are  not  de- 
cisive of  more  than  the  uncontroverted 
proposition  that  the  form  and  appear- 
ance of  a  package  never  constitute  a 
technical  trade-mark. 
See  Lee  v.  Haley,  325. 


87 


BROOKLYN  WHITE-LEAD  COMPANY  V.  MASURY. 

ford  Cast  Steely  Warranted"  the  defendants,  English  makers, 
made  other  goods  with  the  same  stamp. 

Demurrer  by  the  defendants,  on  the  ground  of  the  plain- 
tiffs' alienage,  overruled. 

"  The  question  has  nothing  to  do  with  the  question  of  copyright. 

"  I  apprehend  that  every  subject  of  every  country,  not  being  an 
alien  enemy,  —  and  even  to  an  alien  enemy  the  court  has  extended 
relief  in  cases  of  fraud,  —  has  a  right  to  apply  to  this  court  to  have  a 
fraudulent  injury  to  his  property  arrested.  And  here  the  plaintiffs 
have  the  right  —  a  right  recognized,  I  imagine,  everywhere  in  the 
world,  or  at  least  in  every  civilized  community  —  of  saying,  '  We, 
being  the  manufacturers  of  certain  goods,  claim  that  another  man  shall 
not  manufacture  goods,  and  put  upon  them  our  trade-mark,  and  then 
pass  them  off  as  manufactured  by  us.' " 


153.  Darbey  v.  Whitaker. 
July  13,  1857.     Kindersley,  V.  C.  —  4  Drew.  134  ;  5  W.  R.  772. 

SPECIFIC  performance  of  a  written  agreement  for  the  sale 
of  a  leasehold  public-house,  good-will,  etc.,  refused,  the  agree- 
ment containing  a  clause  as  to  arbitration  which  the  court 
could  not  enforce  :  although,  but  for  that  clause,  specific  per- 
formance would  have  been  granted. 

"  It  is  said  there  can  be  no  specific  performance  of  a  contract  to 
purchase  a  good-will.  No  doubt  you  cannot  have  a  specific  perform- 
ance of  a  contract  to  purchase  a  good-will  alone,  unconnected  with 
business  premises,  by  reason  of  the  uncertainty  of  the  subject  matter. 
But  when  a  good-will  is  entirely  or  mainly  annexed  to  the  premises, 
and  the  contract  is  for  the  sale  of  the  premises  and  good-will,  there  is 
not  the  slightest  ground  for  doubt  that  such  a  contract  is  a  fit  matter 
for  a  decree  in  a  suit  for  specific  performance." 


154.  Brooklyn  White-Lead  Co.  v.  Masury. 
September,  1857.     N.  Y.  Sup.  Ct.  —  25  Barb.  416  ;  R.  Cox,  210. 

THE  plaintiffs  and  defendant  alike  manufactured  white-lead 
in  Brooklyn,  and  had  a  shop  in  New  York.     The  plaintiffs 

88 


K.  V.  CLOSS. 

labelled  their  kegs  "  Brooklyn  White-Lead  Co."  the  defend- 
ant at  first  labelled  his  "  Brooklyn  White-Lead  Pure,  100  Ibs." 
but  afterwards  changed  this  to  "  Brooklyn  White-Lead  and 
Zinc  Company" 

Injunction  granted  to  restrain  the  defendant  from  the  use 
of  the  word  "  Company  "  or  "  Co"  as  being  an  unlawful  imi- 
tation of  plaintiffs'  corporate  name. 

Per  Mitchell,  J.  "It  is  to  protect  the  plaintiffs'  right  of  selling 
their  own  that  the  law  of  trade -marks  has  been  introduced.  It  must 
include  a  right  to  sell  to  all,  to  the  incautious  as  well  as  to  the  cau- 
tious. Any  false  name  that  is  assumed  in  imitation  of  a  prior  true 
name  is  in  violation  of  this  right,  and  the  use  of  it  should  be  re- 
strained by  injunction."  1 

155.  R.  v.  Gloss. 

November  30,  1857.     C.  C.  R.  —  D.Sf  B.  460;    7  Cox,  494;  27  L.  J.  M. 
C.  54;  3  Jur.N.S.  309. 

ON  an  indictment  for  obtaining  money  by  false  pretences, 
for  a  cheat  at  common  law  and  for  forgery,  the  prisoner 
having  sold  a  copy  of  a  painting  as  the  original,  with  the  sig- 
nature of  the  painter,  J.  Linnell,  imitated  in  the  corner,  and 
the  jury  having  acquitted  the  prisoner  on  the  first  count,  but 
found  him  guilty  on  the  others  : 

Held,  (1.)  that  as  to  the  count  for  forgery,  the  conviction 
was  bad,  there  being  no  forgery  of  a  written  document ;  (2.) 
that  as  to  the  count  for  a  cheat  at  common  law,  the  conviction 
would  have  been  good  if  the  count  had  shown  that  it  was  by 
the  false  token  that  the  money  had  been  obtained,  but  that, 
this  not  being  so,  the  conviction  on  this  count  was  bad  ;  (3.) 
and,  therefore,  that  the  conviction  must  be  quashed. 

Per  Cockburn,  C.  J.  "  A  forgery  must  be  of  some  document  or 
writing ;  and  this  was  merely  in  the  nature  of  a  mark  put  upon  the 
painting  with  a  view  of  identifying  it,  and  was  no  more  than  if  the 
painter  put  any  other  arbitrary  mark  as  a  recognition  of  the  painting 

being  his If  a  person  in  the  course  of  his  trade,  openly  and 

1  See  Newman  v.  Alvard,  282. 

89 


AUSTEN  V.  BOYS. 

publicly  carried  on,  were  to  put  a  false  mark  or  token  upon  an  arti- 
cle, so  as  to  pass  it  off  for  a  genuine  one,  when  in  fact  it  was  only  a 
spurious  one,  and  the  article  was  sold  and  money  obtained  by  means 
of  that  false  mark  or  token,  that  would  be  a  cheat  at  common  law." 

156.    Austen    v.  Boys. 

December  7,  1857;  June  23,  1858.  Romilly,  M.  R.  —  24  Beav.  598  ;  27 
L.  J.  Ch.  243;  3  Jur.  N.  S.  1285;  30  L.  T.  216.  Lord  Chelmsford,  C. 
—  2DeG.frJ.  626;  27  L.  J.  Ch.  714;  4  Jur.  N.  S.  719  ;  31  L.  T. 
276;  6  W.  R.  729. 

PARTNERSHIP  suit.  The  parties,  solicitors,  having  agreed, 
by  their  articles  of  partnership,  to  become  partners  for  seven 
years,  and  the  articles  providing  that,  if  either  retired,  he 
should  receive  the  value  of  his  good- will : 

Held,  that  on  the  retirement  of  one  of  the  partners,  by  no- 
tice given  two  days  before  the  end  of  the  seven  years,  he  was 
only  entitled  to  receive  the  value  of  the  good-will  as  for  those 
two  days,  and  not  as  of  a  going  concern. 

Per  Lord  Chelmsford,  C.  "  It  is  very  difficult  to  give  any  intel- 
ligible meaning  to  the  term  '  good-will '  as  applied  to  the  professional 
practice  of  a  solicitor  in  this  abstract  sense.  Where  a  trade  is  estab- 
lished in  a  particular  place,  the  good-will  of  that  trade  means  nothing 
more  than  the  sum  of  money  which  any  person  would  be  willing  to 
give  for  the  chance  of  being  able  to  keep  the  trade  connected  with 
the  place  where  it  has  been  carried  on.  It  was  truly  said  in  argu- 
ment that  '  good-will '  is  something  distinct  from  the  profits  of  a  busi- 
ness, although  in  determining  its  value  the  profits  are  necessarily 
taken  into  account ;  and  it  is  usually  estimated  at  so  many  years'  pur- 
chase upon  the  amount  of  these  profits.  But  the  term  '  good-will ' 
seems  wholly  inapplicable  to  the  business  of  a  solicitor,  which  has  no 
local  existence,  but  is  entirely  personal,  depending  upon  the  trust  and 
confidence  which  persons  may  repose  in  his  integrity  and  ability  to 
conduct  their  legal  affairs." 

90 


DAVIES  V.  HODGSON. 

157.  Welch  v.  Knott. 
December  22,  1857.     Wood,  V.  C.  —  4  K.  If  J.  747;  4  Jur.  N.  S.  330. 

THE  plaintiffs  being  manufacturers  of  soda-water,  which 
they  sold  in  bottles  in  which  were  moulded  the  words  "  J. 
ScJiweppe  £  Co.,  51  Berners  Street,  Oxford  Street,  Genuine 
Superior  Aerated  Waters"  and  which  had  a  label  of  colored 
paper  over  the  cork,  with  the  words  "  J.  Schweppe  $  Co." 
the  defendant  sold  other  soda-water  in  old  bottles  of  the  plain- 
tiffs', moulded  with  their  name,  and  with  somewhat  similar 
labels  over  the  cork,  but  printed  with  the  words  "  Soda 
Water,"  instead  of  the  plaintiffs'  name. 

On  motion  to  dissolve  an  injunction  which  had  been 
granted,  on  motion  by  the  plaintiffs,  to  restrain  the  defendant 
from  infringing  the  plaintiffs'  rights : 

Held,  that  the  injunction  must  be  dissolved,  on  the  ground 
that  the  bottles  were  not  shown  to  have  been  sold,  when  re- 
filled, with  any  intention  to  deceive,  or  probability  of  decep- 
tion, although  if  a  probability  of  deception  had  been  caused, 
though  unintentionally,  by  the  defendant,  the  injunction 
would  have  been  continued. 

158.  Davies  v.  Hodgson. 

February  15,  1858.     Romilly,  M.  R.  —  25  Beav.  177;  27  L.  J.  Ch.  449  ; 
4  Jur.  N.  S.  252;  31  L.  T.  49  ;  6  W.  R.  355. 

ADMINISTRATION  suit.  Held,  that  since  a  surviving  part- 
ner or  clerk,  who  is  appointed  executor,  remains  at  liberty  to 
continue  to  carry  on  the  same  trade,  a  purchaser  of  the  good- 
will of  a  testator's  business  must  take  it  subject  to  the  chance 
of  retaining  the  old  customers,  and  that,  in  the  case  in  ques- 
tion, the  good-will  was  valueless,  since  the  brother  of  the  tes- 
tator, who  had  been  actively  concerned  in  the  business,  could 
not  be  prevented  from  continuing  to  carry  it  on. 

91 


B.  V.  SMITH. 


159.    Ex  parte  Foss ;  In  re  Baldwin. 

February  16,  March  23,1858.  Evans,  Comm. — 30  L.  T.  354.  Knight 
Bruce  and  Turner,  L.  JJ.  —  2  De  G.  Sf  J.  230;  27  L.  J.  BanWcy,  17  ; 
4  Jur.  N.  S.  522;  31  L.  T.  30. 

THE  registered  proprietor  of  the  Standard  and  St.  James' 
Chronicle  newspapers  became  bankrupt  while  the  sheriff  was 
in  possession  of  his  premises. 

Held,  that  the  right  of  publication  of  the  newspapers  was 
property,  and  therefore  "  goods  and  chattels "  within  the 
enactments  in  the  bankruptcy  acts  as  to  reputed  ownership  ; 
but  that  it  was  intangible  property,  and,  therefore,  incapable 
of  seizure  by  a  sheriff,  and,  therefore,  that  though  the  sheriff 
was  in  possession  of  the  premises  at  the  time  of  the  bank- 
ruptcy, the  right  of  publication  passed  to  the  assignees  in 

bankruptcy. 

« 

160.  Lazenby  v.  Lazenby. 

March  17,  1858.     Romilly,  M.  R. — Seton,  <ilh  ed.   237;  cited  41  L.  J. 

Ch.  354. 

INJUNCTION  granted  to  restrain  the  defendant  from  using 
upon  sauces  not  of  the  plaintiff's  manufacture,  labels  or  trade- 
marks similar  to  those  placed  by  the  plaintiff  upon  his  "Har- 
vey's Sauce." 

161.    R.   v.  Smith. 

April  24,  1858.  C.  C.  R.  —  D.  tf  B.  566;  8  Cox,  32;  27  L.  J.  M.  C. 
225;  4  Jur.  N.  S.  1003;  31  L.  T.  135;  6  W.  R.  495;  47  C.  C.  C. 
Sess.  Pap.  269  ;  48  Ib.  8. 

ON  an  indictment  for  forgery,  the  prisoner  having  had 
printed  a  large  number  of  wrappers  in  imitation  of  those  used 
on  Berwick's  baking  powders  and  egg  powders,  having  the 
name  of  Borwick  in  a  prominent  position,  but  with  his  signa- 
ture, and  the  notice  that  without  that  no  powder  was  genu- 
ine, omitted,  and  the  prisoner  having  sold  a  quantity  of  spurf- 
ous  powder  in  these  wrappers  : 

92 


ANSELL  V.  GAUBERT. 

Held,  that,  although  the  prisoner  might  have  been  con- 
victed of  obtaining  money  by  false  pretences,  the  offence  was 
not  that  of  forgery,  and  that  the  conviction  must  be  quashed. 
The  prisoner  subsequently  pleaded  guilty  to  an  indictment  for 
obtaining  money  by  false  pretences. 

Per  Pollock,  C.  B.  "The  issuing  of  this  wrapper  without  the 
stuff  within  it  would  be  no  offence.  In  the  printing  of  these  wrap- 
pers there  is  no  forgery ;  the  real  offence  is  the  issuing  them  with 
fraudulent  matter  in  them." 

Per  Bramwell,  B.  "  Forgery  supposes  the  possibility  of  a  genu- 
ine document,  and  that  the  false  document  is  not  as  good  as  the  genu- 
ine document,  and  that  the  one  is  not  as  efficacious  for  all  purposes 
as  the  other.  In  the  present  case  one  of  these  documents  is  as  good 
as  the  other :  the  one  asserts  what  the  other  does ;  the  one  is  as 
true  as  the  other,  but  the  one  is  improperly  used." 

162.    Marshall  v.  Watson. 
April  28,  1858.     Romilly,  M.  R.  —  25  Beav.  501. 

THE  plaintiff  being  one  of  two  joint  proprietors  of  two 
newspapers,  called  The  Northern  Daily  Express  and  The 
Northern  Weekly  Standard,  and  having  agreed  to  sell  his  in- 
terest to  his  partner,  the  defendant,  the  latter,  while  the  con- 
tract for  purchase  was  still  incomplete,  and  a  suit  by  the 
plaintiff  for  specific  performance  of  the  contract  was  pending, 
published  statements  as  to  the  profits  and  loss  of  the  papers, 
with  a  view  to  the  formation  of  a  company  to  carry  them  on. 

Motion  by  the  plaintiff,  for  an  injunction  to  restrain  the 
defendant  from  publishing  such  statements,  on  the  ground 
that  they  were  injurious  to  the  interests  of  the  newspapers 
and  himself,  refused. 

163.   Ansell  v.  Gaubert. 
June  5,  1858.      Wood,  V.  C.—Seton,  4th  ed.  235. 

INJUNCTION  granted  to  restrain  the  defendant  from  using 
the  names  belonging  to  the  plaintiff's  preparations  for  the 
hair,  and  using  labels  imitated  from  the  plaintiff's,  and  mak- 

93 


MACDONALD  v.  RICHARDSON. 


ing  preparations  after  the  plaintiff's  secret  recipes,  and  pub- 
lishing advertisements  and  circulars  representing  that  the 
defendant  was  carrying  on  the  plaintiff's  business  and  manu- 
facturing the  plaintiff's  goods. 


164.    The  Collins  Company  v.  Reeves. 

June  29,  1858.     Stuart,  V.  C.  —  28  L.  J.  Ch.  56;  4  Jur.  N.  S.  865;  33 
L.  T.  101;  6  W.  R.  717. 

THE  plaintiffs  being  American  manufacturers  of  edge-tools, 
which  they  stamped  with  the  words,  "  Collins  £  Co.,  Hart- 
ford Cast  Steel,  Warranted"  the  defendant  marked  goods  of 
his  own  make  in  the  same  manner,  in  obedience  to  an  order 
from  English  merchants. 

An  interim  injunction  having  been  granted,  motion  by  the 
plaintiffs  for  decree  for  a  perpetual  injunction  refused,  the 
defendant  alleging  a  trade  custom  for  makers'  marks  to  be 
placed  by  their  orders  upon  goods  made  for  them,  and  that 
the  plaintiffs  had  themselves  ordered  this  to  be  done  in  other 
cases,  which  was  not  contradicted  by  the  plaintiffs.  But  in- 
junction continued  for  a  year,  the  plaintiffs  being  required  to 
bring  an  action  at  law  within  that  time. 

"  The  plaintiffs,  if  they  have  an  exclusive  right  to  the  use  of  the 
trade-marks  in  question,  are  entitled  to  the  protection  of  this  court 
in  the  enjoyment  of  such  use.  Though  they  are  aliens,  they  are  en- 
titled to  sue  in  this  court  against  any  fraudulent  invasion  of  their 
right,  and  that  notwithstanding  that  the  tools  stamped  with  the 
marks,  the  fraudulent  use  of  which  is  complained  of,  are  not  usually 
sold  by  them  in  this  country." 


165.   Macdonald  v.  Richardson. 
July  26,  1858.    Stuart,  V.  C.  —  l  Giff.  81;  5  Jur.  N.  S.  9:  32  L.  T.  237. 

PARTNERSHIP  suit.  The  plaintiffs,  being  the  residuary 
legatees  of  one  of  two  partners  in  the  business  of  a  commis- 
sion agent,  sought  to  make  the  surviving  partner,  who  was 
also  an  executor  of  the  deceased  partner,  account  for  the  es- 
tate of  the  latter. 

94 


MYERS  V.  BAKER. 

Held  (among  other  things),  that  the  value  of  the  testator's 
share  of  the  good-will  of  the  partnership  business  at  his  death 
should  be  ascertained,  and  that  the  executor  should  make 
good  to  the  testator's  estate  what  should  be  found  to  be  due 
to  it  for  such  share  of  good-will  and  interest. 


166.  Fenn  v.  Bolles. 

September,  1858.    N.  Y.  Super.  Ct. :  Hoffman,  J.—  7  Abb.  Pr.  202. 

THE  defendant,  being  the  surviving  partner  in  the  firm  of 
"  Hobart  Fenn  £  Co."  continued  after  the  death  of  his  part- 
ner to  trade  in  the  old  name. 

On  motion  by  the  administratrix  of  the  estate  of  the  de- 
ceased partner,  injunction  granted  to  restrain  the  defendant 
from  using  the  name  "  Hobart  Fenn"  or  "  Hobart  Fenn  £ 
Co.,"  on  the  ground  that  either  the  partnership  name  died 
with  the  partnership,  or,  if  it  survived,  was  the  common  prop- 
erty of  the  surviving  partner  and  the  estate  of  the  deceased 
one. 


167.  Myers  v.  Baker. 

November  22,  1858.     Exchequer.  —  3  H.  §•  N.  802;  28  L.  J.  Ex.  90  ;  32 
L.  T.  133;  7  W.  R.  66. 

ACTION  brought  under  5  &  6  Will.  IV.  c.  83,  s.  7,  to  re- 
cover a  penalty  for  marking  patent  penholders  with  the  mark 
"  K.  $  6r.,  Patent  Elastic"  without  the  license  of  the  pat- 
entee. 

Held,  that  it  was  no  defence  to  say  that  the  invention  was 
not  new,  and  the  patent  therefore  bad ;  but  that  a  fraudulent 
intention  on  the  part  of  the  defendants  must  be  proved. 

Cockburn,  C.  J.,  told  the  jury  at  the  trial  that  "  the  intention  of 
the  defendants  was  of  the  essence  of  the  offence ;  that  the  plaintiffs 
were  bound  to  show  that  the  defendants  had  put  the  marks  upon  the 
articles  in  question  with  the  intention  of  imitating  the  marks  used  by 
the  plaintiffs  on  their  patented  articles ;  that  unless  they  thought  that 
the  marks  on  the  pens  and  penholders  manufactured  by  the  defend- 

95 


BURGESS  V.  HATELY. 


ants  were  substantially  the  same  as,  and  intended  to  counterfeit,  the 
plaintiffs'  marks,  they  should  find  for  the  defendants." 


168.   Cooper  v.  Hood- 
December  3,  1858.     Romilly,  M.  R.  —  26  Beav.  293;    28  L.  J.  Ch.  212  ;  4 
Jur.  N.  S.  1266;  32  L.  T.  171;  7  W.  R.  83. 

SUIT  for  the  specific  performance  of  a  contract  for  the  pur- 
chase of  a  share  in  a  business.  Held,  that  specific  perform- 
ance would  not  be  refused  on  account  of  one  of  the  items  to 
be  purchased  being  described  in  the  contract  only  as  "  good- 
will, etc.,"  those  words  having  a  sufficiently  definite  meaning; 
but  specific  performance  refused  on  other  grounds. 

"  The  words  are  '  good-will,  etc.'  Now  these  words  are  connected 
together,  and  unite  such  other  things  as  are  necessarily  connected 
with  and  belong  to  the  good-will,  many  of  which  are  easily  pointed 
out ;  for  instance,  the  use  of  trade-marks,  and  a  covenant  by  the  ven- 
dor not  to  carry  on  a  similar  business  in  Great  Britain  for  a  reason- 
able time,  to  be  limited  in  the  conveyance,  having  regard  to  the  nat- 
ure of  such  undertakings.  All  these  would  be  included  in  the  words 
et  ccetera,  and  would  be  included  in  the  conveyance." 


169.  Burgess  v.  Hately. 
December  14,  1858.     Romilly,  M.  R.  —  26  Beav.  249. 

THE  plaintiffs  being  manufacturers  of  "  Essence  of  Ancho- 
vies,'1' the  defendant  sold  another  sauce  in  bottles  labelled  in 
imitation  of  the  plaintiffs'. 

Suit  for  an  injunction.  On  motion  by  the  plaintiffs  for  de- 
cree, the  defendant  stating  that  no  application  had  been  pre- 
viously made  to  him,  and  that  he  had  acted  in  ignorance  of 
the  plaintiffs'  rights,  and  would  have  submitted  if  previous 
application  had  been  made  to  him,  but  he  having  made  no 
offer  to  pay  the  costs,  Held,  that  an  injunction  must  be  granted, 
and  that  the  defendant  must  pay  the  whole  costs,  since  he 
was  the  aggressor,  by  invading  the  plaintiffs'  rights. 

96 


CHURTON  V.  DOUGLAS. 

170.   Burgess  v.  Hills. 

December  7,  1858.     Romilly,  M.  R.  —  26  Seat.  244;  28  L.  J.  Ch.  356;  5 
Jur.  A7.  S.  233  ;  32  L.  T.  328 ;  7  W.  R.  158. 

THE  defendant  sold  a  sauce  similar  to  the  plaintiffs'  "  Es. 
sence  of  Anchovies,"  under  the  name  of  "  John  Burgess  $ 
Sons'  Original  and  Superior  Essence  of  Anchovies" 

Suit  for  an  injunction  and  account.  On  motion  for  decree, 
the  defendant  having  offered  to  submit  to  an  injunction,  but 
declined  to  pay  costs,  Held,  that  the  defendant  must  pay  the 
whole  costs  of  the  suit,  though  he  had  acted  in  ignorance  of 
the  plaintiffs'  rights. 

"  If  the  defendant  had  offered  the  plaintiffs  all  they  were  entitled 
to,  and  after  that  the  plaintiffs  had  proceeded  in  the  suit,  I  most  cer- 
tainly should  not  have  given  the  plaintiffs  a  penny  of  the  costs  in- 
curred after  that  period ;  indeed,  I  should  have  endeavored  to  make 
them  pay  them." 

171.  The  Collins  Company  v.  Walker. 
January  26,  1859.     Kindersley,  V.  C.  —  7  W.  R.  222. 

THE  plaintiffs  being  American  manufacturers  of  edge-tools, 
which  they  stamped  with  the  words  "Collins  $  Co.,  Hartford 
Cast  Steel,  Warranted,"  the  defendant,  in  accordance  with  a 
customer's  orders,  made  knives  and  stamped  them  with  the 
plaintiffs'  mark. 

Suit  for  an  injunction.  The  defendant  stating  that  he  had 
acted  in  ignorance  of  the  plaintiffs'  existence,  and  offering  to 
give  up  the  stamp,  but  refusing  to  pay  the  costs,  Held,  that 
he  must  submit  to  a  perpetual  injunction,  and  pay  the  costs. 


172.  Churton  v.  Douglas. 

March  17,  1859.     Wood,  V.  C.  — Johns.  174;  28  L.  J.  Ch.  841  ;  5  Jur. 
N.  S.  887;  33  L.  T.  57;  7  W.  R.  365. 

THE  defendant,  John  Douglas,  a  partner  in  the  firm  of 
"  John  Douglas  $  Co."  having  sold  his  share  in  the  business 
7  97 


BRADBURY  V.  DICKENS. 

and  good-will  to  his  partners,  the  plaintiffs,  who  continued 
the  business  as  "Churton,  Bankart  $•  Hirst,  late  John  Doug- 
las £  (70.,"  afterwards  set  up  another  business  in  the  same 
neighborhood  as  "  John  Douglas  $  Co."  and  otherwise  repre- 
sented himself  to  be  carrying  on  business  in  continuation  of 
the  old  concern. 

On  motion  by  the  plaintiffs,  injunction  granted  to  restrain 
the  defendant  from  so  doing. 

P.  187.  "  The  sale  of  the  good-will  of  a  business,  without  more, 
does  not  imply  a  contract  on  the  part  of  the  vendor  not  to  set  up 
again  a  similar  business  himself." 

P.  188.  " '  Good-will,'  I  apprehend,  must  mean  every  advantage, 
every  positive  advantage,  if  I  may  so  express  it,  as  contrasted  with 
the  negative  advantage  of  the  late  partner  not  carrying  on  the  busi- 
ness himself,  that  has  been  acquired  by  the  old  firm  in  carrying  on 
its  business,  whether  connected  with  the  premises  in  which  the  busi- 
ness was  previously  carried  on,  or  with  the  name  of  the  late  firm, 
or  with  any  other  matter  carrying  with  it  the  benefit  of  the  busi- 
ness." 

P.  189.  "  The  name  of  a  firm  is  a  very  important  part  of  the 

good-will  of  the  business  carried  on  by  the  firm The  question 

of  trade-mark  is,  in  fact,  the  same  question.  The  firm  stamps  its 
name  on  the  articles.  It  stamps  the  name  of  the  firm  which  is  carry- 
ing on  the  business  on  each  article,  as  a  proof  that  they  emanate  from 
that  firm ;  and  it  becomes  the  known  firm  to  which  applications  are 
made,  just  as  when  a  man  enters  a  shop  in  a  particular  locality.  And 
when  you  are  parting  with  the  good-will  of  a  business,  you  mean  to 
part  with  all  that  good  disposition  which  customers  entertain  towards 
the  house  of  business  identified  by  the  particular  name  or  firm,  and 
which  may  induce  them  to  continue  giving  their  custom  to  it." 


173.  Bradbury  v.  Dickens. 

March   26,  1859.     Romilly,  M.  .ft. —  27  Beav.  53;  28  L.  J.  Ch.  667;  33 

L.  T.  54. 

THE  parties  being  the  proprietors  of  a  weekly  journal  called 
*'  Household  Words"  on  the  dissolution  of  partnership  between 
them,  the  defendant,  who  had  also  acted  as  editor,  put  out 

98 


INGRAM  V.  STIFF. 

advertisements  in  which  he  announced  his  intention  of  pub- 
lishing a  new  periodical,  and  the  discontinuance  of  the  old 
one. 

On  motion  by  the  plaintiffs  for  an  injunction  to  restrain 
him  from  so  doing,  Held,  that  the  defendant  was  at  liberty 
to  advertise  the  discontinuance  of  his  connection  with  the  pe- 
riodical, but  that  he  must  not  advertise  simply  that  the  pub- 
lication would  be  discontinued,  for  the  good-will  of  the  publi- 
cation, if  of  any  value,  was  the  property  of  the  partnership. 

"  The  property  in  a  literary  periodical  like  this  is  confined  purely 
to  the  mere  title,  and  the  title  of  this  work  is  "  Household  Words," 
and  that  forms  part  of  the  partnership  assets,  and  must  be  sold  for 
the  benefit  of  the  partners,  if  it  be  of  any  value." 

174.   Clement  v.  Maddick. 

April  27,  1859.     Stuart,  V.  C.  —  l  Giff.  98 ;  5  Jur.  N.  S.  592 ;  33  L.  T. 

117. 

THE  plaintiffs  being  the  proprietors  of  a  newspaper  called 
'•'•Bell's  Life  in  London"  the  defendants  began  to  publish  an- 
other newspaper  under  the  name  of  '•'•The  Penny  Bell's  Life 
and  Sporting  News" 

On  motion  by  the  plaintiffs,  injunction  granted  to  restrain 
the  defendants  from  publishing  any  newspaper  under  that 
name,  or  any  other  name  in  which  the  words  "Bell's  Life  " 
should  occur. 

"  This  is  an  application  in  support  of  the  right  to  property 

The  absence  of  a  fraudulent  intention  is  no  defence  against  an  ap- 
plication to  the  court  for  an  injunction  by  the  person  whose  property 

has  been  injured."  1 

> 

175.  Ingrain  v.  Stiff. 

June  3,  1859.     Knight  Bruce  and  Turner,  L.  JJ.  —  5  Jur.  N.  S.  947  ;  83 

L.  T.  195. 

THE  plaintiff  being  the  proprietor  and  publisher  of  a  peri- 
odical called  "The  London  Journal"  the  defendant,  the  for- 
1  See  Hogg  v.  Kirby,  10. 

99 


MELLERSH  V.  KEEN. 

mer  proprietor  and  publisher  of  that  journal,  advertised  a  new 
periodical  to  be  published  by  him  under  the  name  of  "The 
London  Daily  Journal" 

On  motion  by  the  plaintiff,  injunction  granted  by  V.  C. 
Wood  to  restrain  the  defendant  from  so  doing,  and  continued 

on  appeal.1 

« 

176.  Smith  v.  Everett. 

June  30,  1859.     Romilly,  M.  R.  —  27  Beav.  446;  29  L.  J.  Ch.  236;  5  Jur. 
N.  S.  1332;  34  L.  T.  58;  7  W.  R.  605. 

THE  defendant,  being  the  survivor  of  two  partners  in  a 
banking  business,  sold  the  good-will  of  the  business  for  a  con- 
siderable sum.  Suit  by  the  widow  and  executrix  of  the  de- 
ceased partner  for  the  purpose  of  obtaining  half  the  proceeds 
of  the  good-will  for  her  testator's  estate.  Held,  that  the  es- 
tate of  a  deceased  partner  was  entitled  to  a  share  in  the  value 
of  the  good-will  of  the  business,  but  that,  in  ascertaining  the 
share,  regard  must  be  had  to  the  rights  of  the  surviving  part- 
ner; and  that  in  the  case  in  question  the  share  of  the  estate 
of  the  deceased  partner  in  the  proceeds  of  the  good-will  must 
be  ascertained,  regard  being  had  to  the  facts,  that  (1.)  the 
premises  on  which  the  business  was  carried  on  belonged  to 
the  survivor;  (2.)  the  survivor  was  entitled  to  carry  on  a 
banking  business  at  the  same  place  after  the  sale  of  the  good- 
will ;  (3.)  the  sole  right  of  issuing  bank  notes  survived  to  the 
survivor. 


177.  Mellersh  v.  Keen. 

July  12,  1859  ;  July  6,  1860.     Romilly,  M.  R.  —  27  Beav.  236;  28 
Beav.  453. 

PAETNEBSHIP  suit.     Held,  (1.)  that  partners  in  a  bank- 
ing business,  who  had  obtained  the  whole  benefit  of  the  good- 
will and  firm  name,  must  account  to  the  retiring  partner  for 
his  share  of  the  value  of  the  good-will,  etc.,  as  at  the  date  of 
the  dissolution  ;  (2.)  that,  in  estimating  such  value,  regard 
1  See  Hogg  v.  Kirby,  10. 
100 


WOLFE  V.  GOULARD. 

must  be  had  to  the  fact  that  the  continuing  partners  were  at 
liberty  to  carry  on  the  business  and  issue  notes,  without  that 
being  treated  as  part  of  the  good-will ;  (3.)  that  the  value 
had  been  correctly  estimated  by  the  chief  clerk  at  one  year's 
net  annual  profits,  calculated  on  an  average  of  the  three  years 
preceding  the  dissolution. 

28  Beav.  456.     "The  difficulty  of  ascertaining  the  value  of  the 

good-will  of  a  business  is  very  great But  the  court  is  bound 

to  look  at  it  in  this  point  of  view  :  What  would  it  have  produced,  if 
it  had  been  sold  in  the  most  advantageous  manner,  and  under  such 
circumstances  that  it  would  have  produced  the  largest  sum  for  all  the 
parties  interested  ?  " 


178.  Dayton  v.  Wilkes. 

September,  1859.     N.  Y.  Super.  Ct. :  Hoffman,  J.  —  17  How.  Pr.  510; 

R.  Cox,  224. 

PARTNERSHIP  suit.  Held,  that  on  the  dissolution  of  part- 
nership between  the  proprietors  of  a  newspaper  called  "  Por- 
ter's Spirit  of  the  Times,"  the  good-will,  title,  etc.,  of  the 
paper  were  partnership  assets,  and  must  be  protected  and  dis- 
posed of  for  the  benefit  of  the  creditors  of  the  firm,  or  of  the 

partners  jointly. 

« 

179.  "Wolfe  v.  Goulard. 

October,  1859.    N.  Y.  Sup.  Ct. :  Ingraham,  J.  —  18  How.  Pr.  64  ;  R. 

Cox,  226. 

THE  plaintiff  being  the  manufacturer  of  "  Wolfe's  Schie- 
dam Schnapps"  the  defendant  began  to  sell  another  spirit  as 
"  Voldner's  Schiedam  Schnapps." 

On  motion  by  the  defendant,  injunction  which  had  been 
granted  to  restrain  the  defendant  from  so  doing  dissolved,  on 
the  ground  that  there  was  nothing  distinctive  in  the  words 
"  Schiedam  Schnapps,"  which  alone  had  been  imitated. 

"  No  person  can  acquire  a  right  to  the  exclusive  use  of  words,  ap- 
plied as  the  name  of  an  article  sold  by  him,  if  in  their  ordinary  ac- 
ceptation they  designate  the  same  or  a  similar  article." 

101 


CEOOKES  v.  FETTER. 

18O.  Comstock  v.  White. 

February,  1860.     N.  Y.  Sup.  Ct.  :  Sutherland,  J.—  18  How.  Pr.  421 ;   R. 

Cox,  232. 

THE  plaintiffs  and  defendants  having  carried  on  business 
as  pill  manufacturers  in  partnership,  under  the  name  of  "  A. 
J.  White  $  Co."  the  defendants  left  the  plaintiffs  and  car- 
ried on  the  same  business  on  their  own  account,  under  the 
old  name. 

On  motion  by  the  defendants,  injunction  which  had  been 
granted  continued,  so  far  as  it  restrained  the  defendants  from 
applying  to  their  pills  the  term  "  Dr.  Morse's  Indian  Root 
Pills"  in  imitation  of  the  plaintiffs',  but  dissolved  so  far  as 
it  restrained  the  use  by  the  defendants,  in  connection  with 
the  manufacture  of  pills,  of  the  name  of  their  firm,  "  A.  J. 
White  $•  Co."  the  name  of  one  of  the  defendants  being  UA. 
J.  White;"  and  Held,  that  exaggerated  commendations  of 
their  medicines  did  not  disentitle  the  plaintiffs  as  against 
defendants  who  had  been  engaged  with  them  in  the  same 
business. 


181.    Crookes  v.  Fetter. 

February  16,  1860.     Romilly,  M.  R.  —  6  Jur.  N.  S.  1131;  3  L.  T.  N. 

S.  225. 

THE  plaintiff  being  the  editor  of  a  journal  called  The  Pho- 
tographic News,  under  an  agreement  with  the  defendants,  the 
proprietors  of  the  journal,  by  which  it  was  provided  that  the 
title  should  not  be  altered  without  mutual  consent,  the  de- 
fendants terminated  the  agreement  with  the  plaintiff,  and 
omitted  his  name  from  the  title-page.  Motion  by  the  plain- 
tiff for  an  injunction  to  restrain  the  defendants  from  so  doing 
refused,  on  the  ground  that  the  name  of  the  editor,  appearing 
on  the  title-page,  formed  no  part  of  the  title. 

102 


HOWE  V.  SEARING. 

182.   R.   v.  Jones. 

March,  1860.     Middlesex  Sessions.  —  Lloyd  on  Trade-Marks,    11;  Po- 
land on  the  Merchandise  Marks  Act,  1862,  p.  33.- 

ON  an  indictment  for  obtaining  money  by  false  pretences, 
the  prisoner  having  used  spurious  wrappers  similar  to  those 
in  which  Borwick's  Baking  Powder  was  inclosed,  — 

Prisoner  convicted  —  3  years'  penal  servitude. 

183.    R.  v.  Gray  &  Gosling. 
Lloyd  on  Trade-Marks,  11. 

ON  an  indictment  for  obtaining  money  by  false  pretences, 
the  prisoners  having  fraudulently  used  labels  imitated  from 
those  placed  on  Allsopp's  ales,  — 

Prisoners  convicted  —  12  months'  hard  labor. 


184.  Barrows  v.  Knight. 
March,  1860.     Rhode  I.  Sup.  Ct.  —  6  R.  I.  434 ;  R.  Cox,  238. 

THE  plaintiff  being  a  manufacturer  of  cotton  cloth,  which 
he  stamped  with  the  words  "  Roger  Williams9  Long  Cloth," 
the  defendants  marked  other  cotton  cloth  with  the  name 
"  Roger  Williams." 

Action  on  thecase.  Demurrer  overruled,  and  Held,  (1.) 
that  the  name  was  a  good  trade-mark,  being  the  name  of  a 
dead  celebrity  ;  (2,)  that  exact  imitation  was  not  requisite  to 
entitle  the  plaintiff  to  his  remedy. 


185.  Howe  v.  Searing. 

March,  1860.    N.  Y.  Super.  Ct.  —  B  Bos.  354  ;  10  Abb.  Pr.  264  ;    19  How. 
Pr.  14 ;  R.  Cox,  244. 

THE  plaintiff  sold  the  good-will  of  his  baking  business  at 
New  York,  known  as  "  Howe's  Bakery"  to  B.,  covenanting 
not  to  resume  the  same  business  in  the  same  city  without 
B.'s  consent.  He  afterwards  purchased  from  B.  the  right  to 

103 


CORWIN  V.  DALY. 

resume  business  at  New  York,  covenanting  not  to  interfere 
with  the  latter's  business.  The  defendant  bought  the  bakery 
from  B.,  and  continued  to  trade  in  the  old  name  of  "  Howe's 
Bakery" 

Action  for  an  injunction.  Held,  that  the  plaintiff  was  en- 
titled to  an  injunction  to  restrain  the  defendant  from  using 
the  old  name  of  "  Howe's  Bakery"  and  otherwise  using  the 
plaintiff's  name  in  the  business,  on  the  ground  that  the  sale 
of  a  good-will  did  not  of  itself  give  a  right  to  the  use  of  the 
trade  name. 

Per  Hoffman,  J.  "  It  is,  I  apprehend,  a  well  settled  rule  that  the 
good-will  of  a  partnership  business  does  not  survive  to  a  continuing 
partner.  It  belongs  to  the  firm  as  much  as  the  ordinary  stock 
in  trade,  and  must  be  disposed  of  in  some  manner  for  the  benefit 
of  the  firm." 


186.    Colladay  v.  Baird. 
1860.     Phila.  C.  P. :   Ludlow,  J.  —  4  Phila.  139;  R.  Cox,  257. 

THE  plaintiff  being  a  manufacturer  of  cotton  goods  known 
as  "  Aramingo  Check"  which  he  sold  ticketed  with  a  label  on 
which  the  words  "  Aramingo  Mills  "  were  prominent,  the  de- 
fendant began  to  sell  other  goods,  also  bearing  a  label  on  which 
the  name  "  Aramingo  Mills  "  appeared. 

Injunction  to  restrain  the  defendant  from  the  use  of  the 
words  "Aramingo  Mills  "  refused,  on  the  ground  that  the 
manner  in  which  the  defendant  used  the  words  was  so  differ- 
ent from  that  in  which  the  plaintiff  used  them  that  deception 
was  not  to  be  anticipated.1 


187.  Corwin  v.  Daly. 

June,  1860.     N.  Y.  Super.  Ct.—  7  Bos.  222  ;  R.  Cox,  265. 
THE  plaintiffs  selling  gin  in  bottles  labelled  "  Club-House 
Grin"  the  defendants  sold  other  gin  in  bottles  labelled  "Lon- 
don Club-House  Grin" 

Injunction  to  restrain  the  defendants  from  using  the  term 
1  The  decision  in  this  case  is  entirely  without  force.     See  Burnett  v.  Phalon,  277. 

104 


ROBERTSON  V.  QUIDDINGTON. 

"  Club-House  "  gin  refused,  on  the  ground  that  the  term  was 
generally  understood  to  be  indicative  of  a  certain  superior 
quality,  and  not  of  the  plaintiffs'  manufacture. 


188.  Byass  v.  Sullivan. 
July,  1860.     N.  F.  Sup.  Ct. :  Bonney,  J.  —  21  How.  Pr.  50  ;  R.  Cox,  278. 

THE  defendant  sold  bottled  porter  labelled  in  imitation  of 
the  plaintiff's  labels  with  the  words  "  Best  Stout  Porter  from 
JR.  B.  Byass,  London"  and  a  fac-simile  of  his  signature. 

On  a  reference  to  ascertain  the  damages  sustained  by  the 
plaintiff  by  reason  of  the  defendant's,  wrongful  conduct: 

Held,  that  the  defendant  was  privileged  from  answering 
certain  questions,  and  producing  books  or  papers  which  might 
tend  to  convict  him  of  a  criminal  offence,  but  that  in  other 
respects  he  must  make  full  discovery. 

189.    Robertson  v.  Quiddington. 
July  1 7,  1860.     Romilly,  M.  R.  —  28  Beav.  529. 

THE  owner  of  a  two  thirds  share  in  a  partnership  business 
having  bequeathed  two  thirds  of  his  share  in  the  good-will 
alone  to  his  son-in-law,  and  his  share  in  the  partnership  prop- 
erty, apart  from  the  good-will,  having  been  assigned  by  his 
executors  to  the  surviving  partner  : 

Held,  that  notwithstanding  that  the  executors  had  assented 
to  the  bequest  of  the  share  of  the  good-will,  it  was  not  com- 
petent for  the  son-in-law  and  legatee  to  file  a  bill  against  the 
legatee  of  the  remaining  one  third  part  of  the  testator's  share 
of  the  good- will,  and  the  surviving  partner,  who  was  entitled 
to  all  the  rest  of  the  good- will,  to  have  the  bequest  specifically 
made  good,  and  also,  on  the  authority  of  Lewis  v.  Langdon, 
that  the  firm  name  survived  to  the  surviving  partner. 

"  The  good-will  is  a  valuable  and  tangible  thing  in  many  cases, 
but  it  is  never  a  tangible  thing  unless  it  is  connected  with  the  busi- 
ness itself,  from  which  it  cannot  be  separated,  and  I  never  knew  a 
case  in  which  it  has  been  so  treated." 

105 


HOBBS  V.  FRAN<?AIS. 

190.    Brook  v.  Evans. 

July  26,  August  2,  1860.  Stuart,  V.  C.  —  29  L.  J.  Ch.  616;  6  Jur.  N.  S. 
1025;  2  L.  T.  N.  S.  740.  Knight  Bruce  and  Turner,  L.  JJ.  —  29  L.  J. 
Ch.  617;  3  L.  T.  N.  S.  571. 

THE  plaintiffs  having  instituted  a  suit  for  an  injunction  to 
restrain  the  defendants  from  selling  thread  under  the  name 
of  "G-lacS,"  in  infringement  of  their  rights,  the  motion  for  in- 
junction was,  on  the  ground  of  the  plaintiffs'  delay,  ordered 
to  stand  over,  liberty  being  given  to  bring  an  action.  The 
plaintiffs  in  the  suit  printed  and  distributed  a  report  of  the 
proceedings,  containing,  among  other  things,  a  statement  that 
they  had  established  their  claim  to  be  the  first  who  had  used 
the  word  in  question,  the  fact  being  that  no  evidence  had  been 
gone  into. 

Motion  by  the  defendants  for  an  injunction  to  restrain  the 
publication  of  this  report  refused,  on  the  ground  that  it  was 
not  calculated  to  obstruct  the  course  of  justice. 


191.  Hobbs  v.  Franoais. 

September,   1860.     N.  Y.  Super.  Ct. :  Bosworth,  C.  J.  —  19  How.  Pr. 
567;  R.  Cox,  287. 

THE  plaintiff  being  the  manufacturer  of  a  skin-powder 
which  he  called  "Meen  Fun"  and  sold  in  .boxes  bearing  a 
particular  label,  the  defendant  sold  another  powder  in  boxes 
bearing  a  substantially  identical  label. 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the  de- 
fendant from  infringing  his  rights  refused,  on  the  ground  that 
the  plaintiff's  own  labels  falsely  represented  his  American 
compound  to  be  made  in  England  and  patronized  by  the 
Queen,  and  also,  that  it  was  not  established  that  the  term 
"Meen  Fun  "  was  indicative  of  the  plaintiff's  manufacture.1 
1  See  Pidding  v.  How,  60. 

106 


HARPER  V.   PEARSON. 

192.  Wade  v.  Jenkins. 

November  20,  1860.     Stuart,  V.  C.  —  2  Giff.  509  ;  30  L.  J.  Ch.  633  ;  7 
Jur.  N.-S.  39  ;  3  L.  T.  N.  S.  464. 

PARTNERSHIP  suit. 

On  the  determination  of  a  partnership  carried  on  under  ar- 
ticles which  provided  that  "the  good-will  should  belong  to 
the  partners  in  the  proportion  of  their  shares  in  the  business, 
but  should  not  be  taken  into  account  in  the  accounts  of  the 
partnership;"  and  also  that  "  on  the  determination  of  the 
partnership,  a  general  account  and  valuation  of  the  property 
and  effects  of  the  partnership  should  be  taken ; "  Held,  that  in 
the  valuation  of  the  partnership  property  the  good-will  must 
be  included. 


193.  Harper  v.  Pearson. 
December  20,  1860.      Wood,  V.  C.  —  3  L.  T.  N.  S.  547. 

ON  the  expiration  of  a  lease  to  the  plaintiffs,  Messrs.  Har- 
pers &  Moore,  of  certain  fire-brick  works,  those  works,  but 
not  the  mines  from  which  the  clay  there  worked  was  obtained, 
were  leased  by  the  defendants,  who  then  issued  cards  and  cir- 
culars in  which  they  styled  themselves  "E.  £  J.  Pearson 
(late  Harpers  $•  Moore)"  and  which  were  calculated  to  lead 
the  public  to  the  belief  that  the  former  lessees  had  retired 
from  business,  though  they  were,  in  fact,  continuing  to  carry 
on  business  elsewhere. 

On  motion  by  the  plaintiffs,  injunction  granted  to  restrain 
the  issue  of  the  cards  and  circulars,  and  the  misrepresenta- 
tions ;  and  Held^  that  an  injunction  would,  if  asked  for  by 
him,  have  been  granted  almost  as  a  matter  of  course,  to  the 
owner  of  the  mines  of  fire-clay  leased  by  the  plaintiffs,  but 
not  by  the  defendants. 

107 


DALE  V.  SMITHSON. 

194.  Dixon  v.  Pawcus. 

January  22,  1861.     Queen's  Bench.  — 3  Ell.  §•  Ell.  537;  30  L.  J.  Q.  B. 
137  ;   7  Jur.  N.  S.  895;  3  L.  T.  N.  S,  693;  9  W.  R.  414. 

THE  plaintiff  having,  in  accordance  with  the  defendant's 
order,  manufactured  fire-bricks  marked  with  the  name  "Ram- 
say," that  name  being  the  trade-mark  of  one  G.  H.  Ramsay, 
the  latter  filed  a  bill  in  chancery  against  the  plaintiff  for  an 
injunction  and  an  account,  which  resulted  in  the  plaintiff  com- 
promising the  matter  at  a  considerable  expense. 

Action  by  the  plaintiff  for  the  recovery  from  the  defendant 
of  the  loss  which  his  order  had  occasioned  to  the  plaintiff. 

Demurrer,  on  the  ground  that  the  defendant  had  no  right 
to  compromise  the  suit,  since  the  absence  of  fraudulent  inten- 
tion on  his  part  prevented  him  from  being  liable  in  equity  — 
overruled  ;  and  Held,  that  the  plaintiff  was  justified  in  com- 
promising the  suit,  though  innocent  of  intentional  fraud,  since 
that  would  have  been  no  defence  in  equity,  and  that  he  was 
entitled  to  recover  from  the  defendant. 


195.  Dale  v.  Smithson. 
February,  1861.     N.  Y.  C.  P.  — 12  All.  Pr.  237  ;  R.  Cox,  282. 

THE  plaintiffs  being  manufacturers  of  thread,  which  they 
sold  in  packets  labelled  with  the  words,  "  Courtria  Flax. 
Thomas  Nelson  <f  Co.  Warranted  fast  colors,  $  16  oz.," 
the  defendants  sold  other  thread  in  packages  similarly  la- 
belled. 

Action  at  law.  Judgment  having  been  rendered  for  the 
plaintiffs  : 

Held,  on  appeal,  that  the  plaintiffs  were  entitled  to  suc- 
ceed, notwithstanding  that  the  name  placed  by  them  on  their 
label  was  fictitious,  since  the  manner  in  which  it  was  there 
stated  was  adopted  without  any  fraudulent  intention  or  act- 
ual deception  of  the  public.1 

1  See  Pidding  v.  How,  60. 
108 


EMPEROR  OF  AUSTRIA  V.  DAY  AND  KOSSUTH. 

196.  Dent  v.  Turpin. 
Tucker  v.  Turpin. 

April  22,  1861.     Wood,  V.  C.  —  2  /.  tf  H.  139  ;   30  L.  J.  Ch.  495;  7 
Jur.  N.  S.  673  ;  4  L.  T.  N.  S.  637;  9  W.  R.  548.' 

E.  J.  DENT,  who  carried  on  at  three  several  shops  the 
business  of  a  watchmaker,  and  marked  his  goods  with  the 
trade-mark,  "  Dent,  London"  bequeathed  the  business  car- 
ried on  at  two  of  these  shops  to  F.  Dent,  and  that  car- 
ried on  at  the  third  shop  to  R.  Dent,  which  persons  thence- 
forward carried  on  distinct  businesses  at  these  shops,  and  each 
continued  to  use  the  trade-mark.  After  the  deaths  of  both 
these  persons  the  defendants  began  to  deal  in  watches  marked 
with  their  trade-mark. 

Suits  for  injunction  and  account  by  the  representatives  of 
both  firms.  On  demurrer  in  the  first  suit,  Held,  that  each 
plaintiff  might,  without  averring  special  damage,  sue  alone  for 
an  injunction,  and  for  the  delivery  up  of  the  marked  articles 
for  erasure,  and  also  for  an  account  of  profits  and  for  payment 
to  the  respective  plaintiff  of  the  part  of  such  profits  to  which 
she  was  entitled,  and  that  the  demurrer  must  be  overruled.1 


197.  The  Emperor  of  Austria  v.  Day  and  Kossuth. 

May  4,  June  12,  1861.  Stuart,  V.  C.  —  2  Giff.  628;  30  L.  J.  Ch.  690; 
7  Jur.  N.  S.  483  ;  4  L.  T.  N.  S.  274  ;  9  W.  R.  568.  Lord  Campbell,  C.; 
Knight  Bruce  and  Turner,  L.  JJ.  ;  3  —  De  G. ,  F.  &  J.  217;  80  L.  J.  Ch. 
690  ;  7  Jur.  N.  S.  639  ;  4  L.  T.  N.  S.  494;  9  W.  R.  712. 

THE  plaintiff  being  the  Emperor  of  Austria  and  King  of 
Hungary,  the  defendants,  without  his  authority,  issued  notes 
purporting  to  be  Hungarian  notes. 

Injunction  granted  to  restrain  the  defendants  from  issuing 
such  notes,  on  the  ground  of  property  in  the  Emperor. 

Per  Lord  Campbell,  C.'  (3  De  G.,  F.  &  J.  240).  « I  consider  that 
this  court  has  jurisdiction  by  injunction  to  protect  property  from  an 

1  This  case  is  to  be  taken  as  of  an  cord  with  settled  principles.  See  Bury 
exceptional  character ;  it  is  not  in  ac-  v.  Bedford,  222. 

109 


CARTIEB  V.  WESTHEAD. 

act  threatened,  which,  if  completed,  would  give  a  right  of  action.  I  hy 
no  means  say  that  in  every  such  case  an  injunction  may  be  demanded 
as  of  right ;  but  if  the  party  applying  is  free  from  blame  and  promptly 
applies  for  relief,  and  shows  that  by  the  threatened  wrong  his  prop- 
erty would  be  so  injured  that  an  action  for  damages  would  be  no  ade- 
quate redress,  the  injunction  will  be  granted." 

Per  Turner,  L.  J.  (Ib.  253).  "  I  agree  that  the  jurisdiction  of  this 
court  in  a  case  of  this  nature  rests  upon  injury  to  property,  actual  or 
prospective,  and  that  this  court  has  no  jurisdiction  to  prevent  the  com- 
mission of  acts  which  are  merely  criminal,  or  merely  illegal,  and  do 
not  affect  any  rights  of  property ;  but  I  think  there  are  here  rights  of 
property  quite  sufficient  to  found  jurisdiction  in  this  court " 


198.  Henderson   v.  Jorss. 

June  21,  1861.      Wood,  V.  C.—Seton,  ±th  ed.  236;  cited  in  Lloyd  on  Trade- 
Marks,  54. 

THE  plaintiff's  cloths  being  exported  to  the  Chinese  mar- 
ket, and  stamped  with  the  figure  of  a  lion  or  elephant,  from 
which  the  cloths  had  come  to  be  known  as  the  "  lion  chop,"  or 
"  elephant  chop"  the  defendants  exported  other  cloths  also 
stamped  with  a  lion  or  elephant,  so  as  to  produce  deception. 

Injunction  granted  to  restrain  the  defendants  from  so  doing  ; 
and  Held,  that  the  fact  that  round  the  figures  the  respective 
names  of  the  parties  appeared  was  not  sufficient  to  prevent 
deception,  or  to  operate  as  a  defence. 


199.  Cartier  v.  Westhead. 
July  11,  1861.     Wood,  V.  C. 

THE  plaintiff  being  a  French  cotton  manufacturer,  who 
sold  his  cotton  in  parcels  labelled  with  a  cross  and  the  letters 
"  0.  B"  (from  which  the  cotton  had  come  to  be  known  as 
"  Cross  Cotton  "  ),  the  defendants  began  to  deal  in  cotton  of 
another  make,  labelled  with  an  anchor  (the  flukes  of  which 
were  concealed  by  the  wrapping  thread)  and  the  letters  "  W. 
T.,"  and  supplied  such  cotton  so  marked,  in  answer  to  an  in- 
quiry for  "  cross  embroidery  cotton." 

110 


BOWMAN  V.  FLOYD. 

On  motion  by  the  plaintiff,  injunction  granted  to  restrain 
the  defendants  from  selling  cotton,  not  the  plaintiff's,  under 
the  name  of  "French  cross  embroidery  cotton,"  or  "  cross  em- 
broidery cotton,"  or  "  cross  cotton,"  and  from  using  deceptive 
labels. 


20O.  Cartier  v.  May. 
July  12,  1861.     Wood,  V.  C.  —Cited  in  Lloyd  on  Trade-Marks,  55-77. 

AN  injunction  having  been  granted  in  April,  1859,  to  re- 
strain the  defendant  from  selling  cotton  in  parcels  labelled  in 
imitation  of  the  plaintiff's,  which  bore  a  cross  and  the  initials 
"  C.  B."  from  which  it  had  acquired  the  name  of  "  Cross 
Cotton"  the  defendant  adopted  an  altered  label  containing 
the  words  "  cross  cotton"  and  calculated  in  other  respects  to 
deceive. 

Motion  to  commit  refused,  the  defendant  having  avoided  a 
breach  of  the  injunction,  and  the  plaintiff  having  delayed  to 
enforce  his  rights  for  fifteen  months  ;  but  the  injunction  en- 
larged to  cover  the  new  fraud,  and  the  defendant  to  pay  all 
costs  of  the  application. 

2O1.  Bowman  v.   Floyd. 
November,  1861.     Mass.  Sup.  Ct.:  Merrick,  J.  —  85  Mass.  (3  Allen)  76. 

Two  of  the  defendants  having  been  in  business  with  J.  G. 
Loring,  under  the  style  of  "  John  Gr.  Loring  £  Co."  after  his 
death  they  took  the  two  remaining  defendants  into  partner- 
ship, and  continued  to  use  the  old  name  as  before,  both  as 
their  trade  name  and  as  a  trade-mark  on  their  goods. 

Suit  by  the  executors  of  J.  G.  Loring  for  an  injunction  to 
restrain  the  defendants  from  so  doing.  Held,  that,  so  far  as 
the  name  was  used  as  a  trade-mark  on  goods,  the  defendants 
had  acquired  by  user  a  right  to  continue  so  to  use  it;  but  that, 
so  far  as  it  was  used  as  a  trade  name,  the  representatives  of 
J.  G.  Loring  were  entitled,  under  the  Massachusetts  Statute 
(Gen.  St.  c.  56),  to  restrain  them  from  continuing  to  use  it 
without  their  consent. 

Ill 


CARTIER  V.  CARLILE. 

2O2.  Turner  v.  Major. 

January  15,  1862.     Stuart,  V.C.  —  3  Giff.  442 ;  8  Jur.  N.  S.  909  ;    5  L. 
T.  N.  S.  600  ;  10  W.  R.  243. 

PARTNERSHIP  suit.  On  a  dissolution  of  partnership  be- 
tween two  partners,  whose  business  had  been  carried  on  at 
two  distinct  establishments  in  separate  localities,  superin- 
tended by  the  partners  respectively,  it  was  agreed  that  the 
partnership  premises,  stock,  good-will,  etc.,  should  be  sold 
for  the  benefit  of  the  partners,  and  until  sale  should  vest  in 
receivers. 

On  motion  by  the  one  partner,  injunction  granted  to  re- 
strain the  other,  until  the  sale,  from  carrying  on  the  business 
in  one  of  the  localities  on  his  own  account. 


203.  Howe  v.  McKernan. 
February  10,  1862.     Romilly,  M.  R.  —  30  Beav.  547. 

THE  defendant,  who  had  been  the  London  agent  of  the 
plaintiff,  an  American  maker  of  sewing-machines,  called 
"  The  Howe  Sewing-Machines,"  continued,  after  dismissal,  to 
advertise  himself  as  the  plaintiff's  agent,  and  to  sell  as  the 
"  Howe "  sewing-machines,  machines  not  manufactured  by 
the  plaintiff. 

Suit  for  an  injunction  and  damages  or  an  account. 

On  exceptions  to  interrogatories,  the  defendant  having 
refused  discovery  of  all  the  machines  sold  by  him,  the  price, 
profit,  names  of  the  purchasers,  and  other  particulars,  on  the 
ground  that  he  would  thereby  disclose  the  names  of  his  cus- 
tomers and  secrets  of  his  business  :  Held,  that  full  discovery 
must  be  made. 


204.   Cartier  v.  Carlile. 
March  7,  1862.     Romilly,  M.  R.  —  31  Beav.  292  ;  8  Jur.  N.  S.  183. 

THE  plaintiff  made  and  sold  cotton  for  embroidery,  which 
became  known  as  "Cross  Cotton"  from  its  being  labelled  with 

112 


YOUNG  V.  MACRAE. 

the  trade-mark  of  a  cross,  together  with  the  letters  "  C.  B." 
The  defendants  manufactured  and  sold  cotton  similarly 
marked,  except  that  for  "  (7.  B."  was  substituted  "C.  S." 

Suit  for  an  injunction  to  restrain  the  defendants  from  in- 
fringing the  plaintiff's  rights. 

Held,  that  an  injunction  must  be  granted,  and  also  an  ac- 
count, notwithstanding  that  the  defendants  stated  themselves 
to  have  been  ignorant  of  the  rights,  and  even  of  the  existence 
of  the  plaintiff. 

"  I  am  of  opinion  that  the  liability  to  account  for  the  profits  is  in- 
cident to  the  injunction,  and  that  the  fact  of  the  defendant  not  know- 
ing to  whom  the  trade-mark  he  copies  belongs  does  not  in  the 
slightest  degree  affect  the  right  of  the  owner  to  an  injunction,  and  to 
an  account  of  the  profits,  as  soon  as  he  ascertains  that  it  is  imitated 
and  used." 

205.    Young  v.  Macrae. 
March  21,  1862.      Wood,  V.  C.  —  9  Jur.  N.  S.  322. 

THE  plaintiffs  being  the  owners  of  a  patent  for  the  distil- 
lation of  "Paraffin  "  and  "Paraffin  Oil"  the  defendant  began 
to  deal  in  another  oil,  under  the  name  of  "  Paraffin  Oil"  or 
"American  Paraffin  Oil" 

Motion  by  the  plaintiffs  for  an  injunction  to  restrain  the 
defendant  from  using  those  names  refused,  on  the  ground 
that  although  (1.)  a  fancy  name,  "  and  the  more  ridiculous 
it  is  the  better  it  is,"  which  is  recognized  as  indicating  the 
goods  of  a  particular  manufacturer,  will  be  protected  ;  (2.) 
where  a  person  "  has  found  out  an  article  which  is  a  natural 
product,  and  has  given  that  natural  product  a  name,"  that 
name  becomes  designatory  of  the  natural  product  and  may  be 
generally  used ;  and  (3.)  if  the  name  has  been  usually  applied 
to  goods  manufactured  by  a  particular  person,  not  because 
they  are  of  his  make,  but  because  he,  as  having  taken  out  a 
patent,  could  alone  make  them,  then,  after  the  expiration  of 
the  patent,  the  name  may  be  generally  used  ;  or  even  during 
the  continuance  of  the  patent,  if  a  new  means  of  getting  at 
8  113 


BURROWS  v.  FOSTER. 

the  natural  product  is  discovered,  which  does  not  infringe  the 

patent.1 

» 

206.    Parsons  v.  Hayward. 

April  28,  June  11,  1862.  Romilly,  M.  R.—  31  Beav.  199;  31  L.  J.  Ch. 
666;  8  Jur.  N.  S.  474;  6  L.  T.  N.  S.  523;  10  W.  R.  531.  Lord  West- 
bury,  C.  —  31  L.  J.  Ch.  666;  8  Jur.  N.  S.  924 ;  6  L.  T.  N.  S.  628  ;  10 
W.  R.  651. 

PARTNERSHIP  suit.  The  plaintiff  and.  defendant  entered 
into  partnership  as  tailors  for  seven  years,  the  plaintiff  being 
a  mere  sleeping  partner,  and  the  business  being  managed  by 
the  defendant  alone,  and  in  his  name.  No  notice  of  dissolu- 
tion having  been  given,  the  defendant  continued,  after  the 
expiration  of  the  seven  years,  to  carry  on  the  business  upon 
the  same  premises  and  in  his  own  name.  Held,  that  the  de- 
fendant must  account  to  the  plaintiff  for  his  share  of  the  prof- 
its since  the  expiration  of  the  seven  years. 

Per  M.  R.  "  It  is  quite  clear  that  "  at  the  end  of  the  seven  years 
"  the  place  of  business  should  have  been  sold  ;  for  although  it  is  true 
that  a  house  may  be  of  little  value  in  itself,  if  held  at  rack-rent,  still 
it  may  be  of  great  value  as  a  place  for  carrying  on  the  business,  and 
there  may  be  a  peculiar  species  of  value  attached  to  a  particular  spot 
where  a  business  has  for  a  long  time  been  carried  on,  and  which  may 
be  an  asset  of  the  partnership  of  very  high  value." 


207.    Burrows  v.  Foster. 

May  8,  1862.     Kniyht  Bruce  and  Turner,  L.  JJ.  —  1  N.  R.  156;  32  Beav. 
18;  Seton,  4th  ed.  257. 

IT  having  been  agreed  by  deed  that  the  two  partnership 
firms  of  Foster,  Lacy  &  Co.,  and  Bashall,  Lacy  &  Co.,  insur- 
ance brokers,  should  be  dissolved,  and  their  estates  liquidated 
by  the  plaintiff  and  another,  the  plaintiff  to  "  have  the  ben- 
efit and  advantages  of  the  businesses  and  connections  "  of  the 
former  two  partnership  firms,  and  to  be  at  liberty  to  carry  on 

1  See  Burnett  v.  Phalon,  277;  Con-      Spring   Co.  354;  Singer  Man.   Co.   v. 
gress,  frc.,  Spring  Co.  v.  H.  R.  Congress       Wilson,  477. 

114 


OLDHAM  V.  JAMES. 

the  businesses  in  a  new  partnership  with  Lacy,  who  had  been 
a  partner  in  both  firms,  the  defendant,  who  had  been  a  part- 
ner in  Foster,  Lacy  &  Co.,  issued  circulars  to  the  connections 
of  his  old  firm,  stating  the  dissolution,  and  his.  intention  to 
continue  to  carry  on  business,  and  asking  for  orders. 

Injunction  granted  to  restrain  the  defendant  from  repre- 
senting by  circular  or  letter  that  his  new  business  was  a  con- 
tinuation of  the  business  of  either  of  the  former  firms,  and 
from  soliciting  the  customers  of  the  former  firms. 

208.    Burfield  v.  Rouch. 
June  13,  1862.     Romilly,  M.  R.  —  31  Beav.  241. 

PARTNERSHIP  suit.  The  parties  having  carried  on  busi- 
ness in  partnership  under  articles  which  provided  that,  on  the 
dissolution  of  partnership,  the  defendant  should  have  the 
option  of  taking  over  the  lease  of  the  partnership  premises, 
stock  in  trade,  etc.,  at  a  valuation  (the  lease  of  the  premises 
being  the  private  property  of  the  plaintiff),  but  made  no 
mention  of  the  good-will : 

Held,  that,  in  the  valuation  of  the  lease,  the  plaintiff  was 
precluded  by  the  articles  from  having  any  consideration  paid 
to  the  fact  that  a  business  had  long  been  carried  on  upon  the 
premises,  since  that  would  be  to  add  the  value  of  the  good- 
will to  the  value  of  the  lease. 


2O9;  Oldham  v.  James. 

November  5,  1862  ;  January  27,  1863.     Smith,  M.  R.  of  I.  —  13  Ir.  Ch. 
393.     Brady,  C.  of  L,  and  Blackburn,  L.  J.  — 14  Ir.  Ch.  81. 

THE  respondents  being  the  proprietors  of  a  compound 
which  they  called  "  Lieutenant  James*  Blistering  Compound" 
and  sold  under  a  particular  trade-mark,  and  the  petitioner 
having  sold  another  compound  under  a  similar  trade-mark,  an 
agreement  was  entered  into  between  the  parties  by  which  all 
claims  of  the  respondents  in  respect  of  the  infringement  were 
compromised,  both  with  regard  to  the  infringer  himself  and 

115 


CLARK  V.  LEACH. 

to  persons  who  had  purchased  from  him.  The  respondents 
subsequently  took  proceedings  against  persons  who  had  pur- 
chased the  spurious  goods  from  the  petitioner  before  the  com- 
promise, and  were  still  selling  them. 

Petition  for  specific  performance  of  the  agreement. 

Held,  (1.)  that  the  agreement  only  compromised  sales 
made  before  its  date,  and  did  not  authorize  future  sales,  even 
of  goods  bought  before  such  date  ;  (2.)  and  further,  that, 
even  if  it  did  profess  to  authorize  them,  it  would  involve  a 
fraud  on  the  public,  and  could  not  be  specifically  enforced,  so 
as  to  prevent  the  owner  of  the  trade-mark  from  suing  the  per- 
sons selling  the  spurious  goods. 


21O.    Clark  v.  Leach. 

December  4,  1862;  January  30,  1863.  Romilly,  M.  R.  —  32  Beav.  14; 
32  L.  J.  Ch.  290 ;  9  Jur.  N.  S.  165;  8  L.  T.  N.  S.  40;  11  W.  R.  227 ; 
1  N.  R.  155.  Lord  Westbury,  C.  —  l  De  G.,  J.  If  S.  409;  32  L.  J. 
Ch.  290;  9  Jur.  N.  S.  610;  8  L.  T.  N.  S.  40;  11  W.  R.  351. 

PARTNERSHIP  suit. 

The  parties  carried  on  business  in  partnership  under  arti- 
cles, by  which  it  was  'provided  that  they  should  be  partners 
for  seven  years,  and  that,  in  certain  events,  the  one  should 
have  a  right  to  give  notice  to  the  other  of  the  termination  of 
the  partnership,  in  which  case  the  partner  receiving  the  no- 
tice should  "  be  considered  as  quitting  the  business  for  the 
benefit  of  the  partner  giving  the  notice."  After  the  expira- 
tion of  the  seven  years  such  notice  was  given  by  the  plaintiff 
to  the  defendant,  who  then  set  up  business  in  the  neighbor- 
hood as  "  R.  Leach  £  Co.,  late  Leach  £  Clark"  the  plaintiff 
continuing  to  use  the  old  name  of  "  Leach  $  Clark."  Held, 
that,  the  seven  years  having  expired,  the  partnership  had  be- 
come a  partnership  at  will,  and  the  clause  did  not  apply  to 
the  altered  circumstances. 

Per  M.  R.  (32  Beav.  18).  "  Has  not  the  defendant  a  right  to  say 
that  he  lately  belonged  to  a  certain  firm,  and  cannot  he  advertise 
that  fact  ?  The  difficulty  is,  if  he  cannot  be  prevented  from  carrying 

116 


WOODWARD  V.  LAZAR. 

on  the  same  business,  is  he  not  at  liberty  to  solicit  the  public  at  large, 
and  to  do  so  by  telling,  as  is  the  truth,  that  he  belonged  to  a  late 
firm  ?  " 

211.    Jurgensen  v.  Alexander. 

December,  1862.     N.  Y.  C.  P.:  Brady,  J.  —  24  How.  P.  R.  269  ;  R. 

Cox,  298. 

THE  plaintiff  being  a  maker  of  watches,  which  he  stamped 
•with  the  name  "  Jules  Jurgensen,  Copenhagen,"  the  defendant 
exposed  other  watches  for  sale  bearing  a  similar  stamp. 

Action  for  an  injunction  to  restrain  the  defendant  from  so 
doing.  Held,  that  the  injunction  must  be  granted,  and  that 
the  marked  watches  must  be  produced  for  the  spurious  marks 
to  be  erased,  and  that  the  defendant  must  pay  the  costs. 

212.    "Woodward  v.  Lazar. 

January,  1863.     Cat.  Sup.  Ct.  —  21   Cal.  448  ;  R.  Cox,  300. 

* 
THE  plaintiff  having  erected  on  a  plot  of  land  of  which  he 

was  tenant  a  hotel  which  he  called  "The  What  Cheer  House,"" 
and  having  afterwards  built  a  new  "  What  Cheer  House  "  on 
an  adjoining  plot,  and  surrendered  the  former  plot,  the  de- 
fendants purchased  the  first  plot  and  house  from  the  owners, 
after  the  surrender,  and  opened  a  hotel  there,  under  the  name 
of  "  The  Original  What  Cheer  House  "  ("  original  "  being  in 
small  letters  on  the  sign). 

Injunction  granted  to  restrain  the  defendants  from  using 
the  name  "  What  Cheer  House  "  as  the  name  of  any  hotel  in 
the  same  city. 

Per  Norton,  J.  "  A  person  may  have  a  right,  interest,  or  property 
in  a  particular  name,  which  he  has  given  to  a  particular  house,  and 
for  which  house,  under  the  name  given  to  it,  a  reputation  and  good- 
will may  have  been  acquired ;  but  a  tenant,  by  giving  a  particular 
name  to  a  building  which  he  applies  to  some  particular  use,  as  a  sign 
of  the  business  done  at  that  place,  does  not  thereby  make  the  name  a 
fixture  to  the  building,  and  transfer  it  irrevocably  to  the  landlord."  J 
1  See  Howard  v.  Henrlques,  108- 

117 


THE  LEATHER  CLOTH  CO.  V.  HIRSCHFELD. 

213.    Edelsten  v.  Edelsten. 

January  28,  1863.   Lord  Weslbury,  C.  —  1  De  G. ,  /.  §•  S.  185  ;  9  JUT.  N. 
S.  479;   7  L.  T.  N.  S.  768 ;  11  W.  R.  328;  1  TV.  R.  300. 

THE  plaintiff  being  a  manufacturer  of  wire  which  he  sold 
with  metal  labels,  or  tallies,  attached  to  it,  bearing  his  trade- 
mark, an  anchor,  from  which  his  wire  had  acquired  the  name 
of  "  Anchor  Brand  Wire"  the  defendants  made  and  sold  wire 
with  tallies  bearing  an  anchor  and  small  crown,  and  called  the 
wire  "  Crown  and  Anchor  Wire." 

Suit  for  an  injunction  and  account. 

Held,  (1.)  that  the  plaintiff  was  entitled  to  an  injunction 
to  restrain  the  infringement  ;  (2.)  that  an  account  would 
only  be  given  with  the  injunction  in  respect  of  any  user  by  a 
defendant  after  he  had  become  aware  of  the  prior  ownership  ; 
(3.)  that  proof  of  fraud  was  of  the  essence  of  the  action  at 
law,  but  that  the  Court  of  Chancery  would  "  act  on  the  prin- 
ciple of  protecting  property,  alone,"  and  that  the  plaintiff 
need  not  prove  fraud  or  inferiority  of  quality  ;  (4.)  that  if  the 
goods  were  sold  for  the  purpose  of  being  resold  in  the  market 
the  plaintiff  would  have  his  equitable  remedy,  though  all  the 
immediate  purchasers  knew  that  the  goods  were  not  the  plain- 
tiff's ;  (5.)  that  proof  of  actual  deception  was  not  necessary 
in  equity,  if  the  court  were  satisfied  that  the  resemblance  was 
such  as  to  be  likely  to  cause  the  one  mark  to  be  mistaken  for 
the  other ;  (6.)  that  where  the  plaintiff  was  found  entitled  to 
the  relief  he  asked,  he  would  be  entitled  to  the  costs  of  the 
suit  in  which  it  was  given. 


214.  The  Leather  Cloth  Co.  (Limited)  v.  Hirschfeld.    (1.) 
March  11,  1863.     Wood,  V.  C.  —  1  N.  R.  551  (and  see  1  H.  §•  M.  295). 

THE  plaintiffs  being  manufacturers  of  leather  cloth,  the 
defendants,  trading  as  "  The  Anglo-American  Leather  Cloth 
Co."  sold  a  similar  article  under  a  trade-mark  similar  to  the 
plaintiffs'. 

Suit  for  an  injunction  to  restrain  the  defendants  from  so 

118 


HALL  v.  BARROWS. 

doing.  Held,  that  an  injunction  must  be  granted,  and  an  in- 
quiry as  to  damages  directed,  notwithstanding  that  the  plain- 
tiffs' trade-mark  contained  the  words  "  tanned  leather  cloth, 
patented  Jan.  24th,  '56,"  and  that  the  plaintiffs'  leather  cloth 
was,  in  fact,  no  longer  tanned  or  patented,  since  the  statement 
was  correct  when  it  was  first  inserted  in  the  trade-mark.1 


215.  Hall  v.  Barrows. 

March  16,  December  21,  1863.  Romilly,  M.  R.  —  32  L.  J.  Ch.  548;  9 
Jur.  N.  S.  483;  8  L.  T.  N.  S.  227  ;  11  W.  R.  525  ;  1  N.  R.  543.  Lord 
Weslbury,  C.—±DeG.,  J.  £  S.  150 ;  33  L.  J.  Ch.  204;  10  Jur.  N.  S. 
55;  9  L.  T.  N.  S.  561;  12  W.  R.  322  ;  3  N.  R.  259. 

THE  plaintiffs  were  the  executors  of  one  of  two  partners  in 
an  iron-master's  business  carried  on  under  articles  which  gave 
the  last  surviving  partner  the  option  of  taking  over  the  "  stock 
belonging  to  the  partnership  "  at  a  valuation. 

Suit  for  an  account,  sale  of  the  business,  and  good-will,  etc. 
Held,  by  the  M.  R. :  (1.)  That  the  business  and  good-will 
must  be  sold  as  a  going  concern ;  (2.)  that  the  trade-mark 
"  B.  B.  H."  with  a  crown,  used  by  the  firm  (the  initials  being 
those  of  the  original  partners  in  the  firm),  was  a  personal  and 
not  a  local  mark,  and  could  not  be  sold  with  the  good-will, 
since  it  would  induce  a  belief  that  the  purchaser  was  the  old 
firm,  and  so  deceive  the  public  ;  (3.)  that  the  surviving  part- 
ner could  not  be  prevented  from  using  the  mark  after  the  sale 
of  the  good-will  of  the  business,'  but  that  he  would,  on  the  con- 
trary, retain  the  exclusive  right  of  using  it. 

Held,  by  Lord  Westbury,  C.:  (1.)  that  the  surviving  part- 
ner having  an  option,  under  the  partnership  articles,  of  taking 
over  the  business  at  a  valuation,  the  value  must  be  ascer- 
tained in  chambers,  and  not  by  means  of  a  sale  ;  (2.)  that 
there  was  no  evidence  to  show  that  the  trade-mark  was  per- 
sonal,—  that  it,  therefore,  was  a  subject  of  sale,  and  as  such 
must  be  taken  into  account  in  the  valuation  to  the  surviving 
partner ;  (3.)  that  the  good-will  of  the  business  must  be 
1  See  Leather  Cloth  Co.  v.  American  Leather  Cloth  Co.  223. 

119 


HOPKINS  v.  HITCHCOCK. 

taken  into  account  and  valued,  as  being  included  in  the 
"  stock  belonging  to  the  partnership  ;  (4.)  that  the  valuation 
must  be  made  on  the  footing  of  the  surviving  partner  being 
at  liberty  to  set  up  and  carry  on  the  same  business  as  that  of 
the  partnership. 

Per  M.  R.  "  The  interference  of  a  court  of  equity  cannot  de- 
pend on  the  length  of  time  the  manufacturer  has  used  the  trade- 
mark." 

Per  L.  C.  "A  name,  though  originally  the  name  of  the  first 
maker,  may  in  time  become  a  mere  trade-mark  or  sign  of  quality,  and 
cease  to  denote  or  to  be  current  as  indicating  that  any  particular  per- 
son is  the  maker.  In  many  cases  a  name  once  affixed  to  a  manufact- 
ured article  continues  to  be  used  for  generations  after  the  death  of 
the  individual  who  first  affixed  it.  In  such  cases  the  name  is  accepted 
in  the  market  either  as  a  brand  of  quality,  or  it  becomes  the  denomi- 
nation of  the  commodity  itself,  and  is  no  longer  a  representation 
that  the  article  is  the  manufacture  of  any  particular  person. 

"  There  can  be  no  right  to  the  exclusive  ownership  of  any  symbols 
or  marks  universally  in  the  abstract ;  thus,  an  iron-founder  who  has  a 
particular  mark  for  his  manufactures  in  iron  could  not  restrain  the 
use  of  the  same  mark  when  impressed  in  cotton  or  woollen  goods  ;  for 
a  trade-mark  consists  in  the  exclusive  right  to  the  use  of  some  name 
or  symbol  as  applied  to  a  particular  manufacture  or  vendible  commod- 
ity, and  such  exclusive  right  is  property. 

"  Imposition  on  the  public  is  necessary  for  the  plaintiff's  title,  but 
in  this  way  only,  that  it  is  the  test  of  the  invasion  by  the  defendant  of 
the  plaintiff's  right  of  property ;  for  there  is  no  injury  if  the  mark 
used  by  the  defendant  is  not  such  as  is  mistaken,  or  is  likely  to  be  mis- 
taken, by  the  public  for  the  mark  of  the  plaintiff;  but  the  true  ground 
of  this  court's  jurisdiction  is  property." 


216.  Hopkins  v.  Hitchcock. 

April  20,  1863.     Common  Pleas.  —  14  C.  B.  N.  S.  65;  32  L.  J.  C.  P.  154; 
9  Jur.  N.  S.  896;    8  L.  T.  N.  S.  204  ;  11  W.  R.  597;  2  N.  R.  32. 

THE  firm  of  "  Snowden  £  Hopkins  "  having  manufactured 
bar  iron  and  stamped  it  with  "  8.  $  H"  and  a  crown,  when 
that  firm  was  replaced  by  the  new  firm  of  "  Hopkins  $•  Co." 

120 


BATTY  V.  HILL. 

the  latter  stamped  the  same  quality  of  iron  with  "#!  $  Co.'1 
and  a  crown.  The  defendant  bought  iron  from  Hopkins  & 
Co.,  described  in  the  bought  and  sold  notes  as  "  S.  $  H. 
(crown)  common  bars,11  but  the  iron,  when  tendered,  being 
found  to  be  marked  "  H.  $•  Co"  with  a  crown,  was  rejected. 

Action  for  non-acceptance. 

The  jury  having  found  a  verdict  for  the  plaintiffs,  on  the 
ground  that  the  mark  was  not  a  material  part  of  the  bar- 
gain, and  that  the  defendant  had  substantially  what  he  had 
bargained  for : 

Held,  that  the  contract  was  for  iron  of  a  particular  quality, 
and  not  for  iron  bearing  a  particular  brand,  and  that  the 
plaintiffs  were  entitled  to  recover. 

217.  Woollam  v.  Ratcliff. 
May  27,  1863.     Wood,  V.  C.—  l  H.  if  M.  259. 

THE  plaintiff  being  a  silk  throwster,  who  was  in  the  habit 
of  making  up  his  silk  in  a  distinctive  manner,  and  affixing  to 
each  bundle  a  label  with  the  mark  "  St.  A***** "  (St.  Al- 
ban's),  the  defendant,  in  obedience  to  an  order,  made  up  silk 
in  the  same  manner,  omitting  the  trade-mai¥k. 

Injunction  to  restrain  the  defendant  from  infringing  the 
plaintiff's  rights  refused,  on  the  ground  that  there  was  no 
actual  deception  proved,  and  that,  though  there  was  the  ex- 
press order  to  imitate  the  plaintiff's  bundle,  with  the  omis- 
sion of  the  mark,  it  was  not  established  that  deception  was 
probable. 

218.  Batty  v.  Hill. 

May  28,  1863.     Wood,  V.  C.—  \H.l$  M.  264  ;    8  L.  T.  N.  S.  791;   11 
W.  R.  745 ;  2  N.  R.  265. 

THE  plaintiff  being  a  prize  medallist  at  the  London  Inter- 
national Exhibition,  1862,  the  defendant,  who  had  not  exhib- 
ited or  obtained  any  medal  there,  placed  on  his  goods  the 
words,  "  Prize  Medal,  1862." 

1    See  Williams  v.  Johnson,  150. 

121 


McINTYRE  v .  BELCHER. 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendant  from  so  doing  refused,  on  the  ground  that  no  one 
could  obtain  a  right  of  property  in  the  nature  of  a  trade-mark 
in  a  prize  medal,  since  all  medallists  could  use  it,  and  that 
even  if  it  were  possible  to  do  so,  the  defendant  had  used 
it  first.1 


219.  Schiele  v.  Brakell. 
May  30,  1863.     Stuart,  V.  C.  —  11  W.  R.  796  ;  Seton,  4th  ed.  253. 

THE  plaintiffs  having  carried  on  business  at  North  Moor, 
Oldham,  as  "  C.  /Schiele  £  (70. ,"  or  "  Christian  Schiele  £ 
Co.,"  the  defendants  bought  their  manufacturing  business, 
and  obtained  from  them  a  lease  of  their  business  premises, 
and  exclusive  licenses  for  the  use  of  certain  patents  owned 
by  them.  The  defendants  caused  all  letters  addressed  to  "(7. 
Schiele  $  Co"  to  be  brought  to  them,  and  executed  orders 
intended  for  the  plaintiffs,  for  the  manufacture  of  articles 
under  other  patents  than  those  which  the  defendants  were 
licensed  to  use. 

Injunction  granted  to  restrain  the  defendants  from  opening 
such  letters,  executing  such  orders,  etc. 


22O.  Mclntyre  v.  Belcher. 

June  5,  1863.     Common  Pleas.  — 14  C.  B.  N.  S.  654;    32  L.  J.  C.  P.  254; 
10  Jur.  N.  S.  239 ;  8  L.  T.  N.  S.  461  ;  11  W.  R.  889;  2  N.  R.  324. 

THE  plaintiffs  having  entered  into  an  agreement  with  the 
defendant  for  the  sale  to  him  of  a  surgeon's  practice  and  the 
good-will  of  it,  and  having  thereby  further  contracted  not  to 
practise  in  the  neighborhood  for  ten  years,  to  introduce  the 
defendant  to  his  patients,  etc.,  the  defendant  contracting  to 
pay  the  plaintiffs  a  certain  proportion  of  the  profits  at  the  end 
of  each  of  the  first  four  years,  the  defendant  incapacitated 
himself  from  carrying  on  the  business  and  from  obtaining  any 
receipts  from  it. 

Action  on  the  agreement.  Held,  that,  though  there  was  no 
1  See  Taylor  v.  Gillies,  448. 

'  122 


BURY  v.  BEDFORD. 

special   undertaking,   there  was    an    implied    undertaking  to 
keep  up  the  practice. 

i 

221.  The   London  Assurance  v.  The  London   and  West- 
minster Assurance  Corporation  (Limited). 

June  11,  1863.     Stuart,  V.  C.  —  32  L.  J.  Ch.  664  ;  9  Jur.  N.  S.  497;  8  L. 

T.  N.  S.  497. 

MOTION  by  the  plaintiffs  for  an  injunction  to  restrain  the 
defendants  from  using  their  name  (as  above)  or  any  other 
name  resembling  that  of  the  plaintiffs  refused. 


222.  Bury  v.  Bedford. 

June  25,  1863;  May  3,  1864.  Romilly,  M.  R.  —  32  L.  J.  Ch.  741  ;  9  Jur. 
N.  S.  956  ;  8  L.  T.  N.  S.  847;  11  W.  R.  973;  1  N.  R.  5.  Knight  Bruce 
and  Turner,  L.  JJ.  —  4  De  G.,  J.  Sf  S.  352;  33  L.  J.  Ch.  465  ;  10  Jur. 
N.  S.  503  ;  10  L.  T.  N.  S.  470;  12  W.  R.  726;  4  N.  R.  180. 

THE  defendant,  John  Bedford,  a  steel  manufacturer  at  Shef- 
field, acquired  from  the  Cutlers'  Company,  though  not  a  mem- 
ber of  the  company,  a  mark  consisting  of  the  figure  of  a  lion 
couchant,  surmounted  by  crossed  arrows,  with  the  initials  "  J. 
0.  B.  #."  (John  Bedford,  Oughtibridge,  Sheffield)  written  in 
the  spaces  formed  by  the  crossings  of  the  arrows.  He  also 
purchased  the  mark  "  Wm.  Ash  $•  Co."  On  his  entering  into 
partnership  with  certain  other  persons,  the  articles  of  partner- 
ship provided  that  the  corporate  mark  should  be  used  by  the 
partnership,  and  should  be  a  partnership  asset,  and  that  at  the 
expiration  of  the  partnership  the  several  partners  should  be 
entitled  to  use  it  for  the  remainder  of  their  lives.  The  cor- 
porate mark  was  used  by  the  firm  on  certain  classes  of  goods ; 
"  Wm.  Ash  $•  Co"  on  others.  The  partnership  property  and 
the  separate  estates  of  the  partners  having  been  assigned  by 
a  creditors'  deed  to  trustees  for  the  creditors  of  the  firm,  the 
plaintiff  bought  from  the  trustees  the  partnership  property 
and  trade-marks. 

Suit  for  an  injunction  to  restrain  John  Bedford  from  using 
or  granting  the  right  to  use  the  trade-marks. 

123 


LEATHER  CLOTH  CO.  v.  AMERICAN  LEATHER  CLOTH  CO. 

Held,  by  the  M.  R.,  that,  as  to  the  corporate  mark,  the  in- 
junction could  only  be  granted  to  restrain  an  assignment  of 
the  right  to  use,  and  not  to  restrain  the  use  of  the  mark  by 
the  defendant,  and  that  no  order  as  to  the  mark  "  Wm.  Ash 
$  Co"  should  be  made. 

Held,  by  the  L.  J J. :  (1.)  that,  at  all  events,  where  owned 
by  a  non-freeman  of  the  Cutlers'  Company,  a  cutlers'  corpo- 
rate mark  was  assignable  ;  (2.)  that  the  assignability  of  a 
mark  containing  a  personal  element  must  depend  upon  the 
circumstances  of  the  particular  case ;  (8.)  that  the  corporate 
mark  in  question  was  not  so  personal  as  to  be  incapable  of  as- 
signment ;  (4.)  that  all  the  interest  of  the  defendant  in  the 
mark  passed  to  the  trustees  under  the  creditors'  deed  ;  (5.) 
that  the  purchase  by  the  plaintiff  from  the  trustees  was  good  ; 
(6.)  that  the  plaintiff  thereby  acquired  a  right  to  exclude  the 
defendant  from  the  use  of  the  mark  ;  (7.)  that  the  mark 
"  Wm.  Ash  $•  Co."  passed  to  the  partnership  on  its  forma- 
tion, there  being  no  express  provision  to  the  contrary ;  and 
that,  therefore,  the  injunction  must  go  to  the  full  extent 
prayed. 

Per  Turner,  L.  J.  (4  De  G.,  J.  &  S.  374).  "  The  whole  trade  is 
carried  into  the  partnership,  and  the  trade-mark  is  but  an  element  of 
the  trade." 


223.  The  Leather  Cloth  Co.  (Limited)  v.  The  American 
Leather  Cloth  Co.  (Limited). 

July  8,  December  21, 1863;  Mayl2,1865.  Wood,  V.  C.  —  1  H  §-  M.  271 ; 
32  L.  J.  Ch.  721;  8  L.  T.  N.  S.  829;  11  W.  R.  931  ;  2  N.  R.  481. 
Lord  Weslbury,  C.  —  4  De  G.,  J.  ff  S,  137  ;  33  L.  J.  Ch.  199;  10  Jur. 
N.  S.  81  ;  9  L.  T.  N.  S.  558;  12  W.  R.  289;  3  N.  R.  264.  House  of 
Lords.  — 11  H.  L.  C.  523;  35  L.  J.  Ch.  53;  11  Jur.  N.  5.513;  12  L. 
T.  N.  S.  742 ;  13  W.  R.  873  ;  6  N.  R.  209. 

SUIT  for  an  injunction  to  restrain  the  infringement  of  a 
complicated  stamp  on  leather  cloth. 

Held,  by  the  V.  C. :  (1.)  that  the  general  similarity  of  the 
stamps  was  such  as  to  render  the  one  likely  to  be  taken  for 
the  other  ;  (2.)  that  the  plaintiffs  were  not  disentitled  by  the 

124 


LEATHER  CLOTH  CO.  V.  AMERICAN  LEATHER  CLOTH  CO. 

fact  that  their  stamp  contained  the  words  "  tanned  patented" 
although  the  stamp  was  usually  applied  to  cloth  neither  tanned 
nor  patented,  since  the  statement  was  correct  when  first  made, 
and  no  one  could  be  deceived  as  to  the  tanning  ;  (3.)  that  the 
plaintiffs  were  not  disentitled  by  the  fact  that  their  stamp 
contained  the  words  "  J.  R.  and  C.  P.  Crockett,  Manufact- 
urers" the  plaintiffs  being  entitled  to  use  the  name  of  those 
to  whose  business  they  had  succeeded  ;  (4.)  that  the  plaintiffs 
were  not  prevented  from  suing  by  the  fact  that  there  was 
another  person  in  existence  who  might  have,  but  had  not,  used 
the  name  "  Crockett  ; "  (5.)  that  persons  who  had  been  in 
Crockett's  employ  were  justified  in  styling  themselves  "  late 
with  Crockett"  in  such  a  manner  as  not  to  produce  deception 
(1  H.  &  M.  279)  ;  (6.)  that  an  injunction  must  be  granted, 
with  costs,  but  without  any  damages  or  account  (see  11  W. 
R.  933). 

Held,  by  the  L.  C.,  that  assuming  the  stamps  to  be  similar, 
so  that  the  one  would  be  an  infringement  of  the  other,  the 
plaintiffs  were  disentitled  by  reason  of  the  misstatements  con- 
tained in  their  stamp  (4  De  G.,  J.  &  S.  147),  of  which  the 
principal  were  the  false  statement  of  "  tanned  patented  "  and 
the  use  of  the  words  "  J.  R.  $•  C.  P. Crockett,  Manufacturers" 
which  was  calculated  to  attribute  the  manufacture  of  the  cloth 
to  those  persons  individually,  though  the  plaintiffs  might  have 
styled  their  cloth  "  Crockett?*  Leather  Cloth"  Decision  re- 
versed, but  without  costs,  on  account  of  the  defendants'  dis- 
ingenuous conduct. 

Held,  by  the  House  of  Lords  :  (1.)  that  the  defendants' 
stamp  was  not  so  similar  to  the  plaintiffs'  as  to  be  an  infringe- 
ment ;  (2.)  that,  if  it  had  been,  the  plaintiffs  would  have  been 
disentitled  by  their  misrepresentations. 

Held,  further,  by  the  L.  C.,  that  the  stamps  were  not  trade- 
marks at  all,  but  mere  advertisements. 

Per  V.  C.  (1  H.  &  M.  290).  "  Every  case  must  rest  on  its  own 
circumstances  ;  but  the  general  principle  is  that  one  person  shall  not 
be  allowed  to  proclaim  his  goods  as  the  goods  of  another,  and  if  it 
appear  that  the  mark  used  does  not  indicate  the  plaintiff  more  than 

125 


LEATHER  CLOTH  CO  V.  AMERICAN  LEATHER  CLOTH  CO. 

a  multitude  of  other  persons  (as  in  the  case  where  '  Prize  Medal ' 
was  the  symbol),  then  a  defendant  who  uses  it  does  not  bring  himself 
within  the  prohibition." 

Per  L.  C.  (4  De  G.  J.  &  S.  141).  "  The  mistake  of  buyers  in  the 
market,  under  which  they,  in  fact,  take  the  defendant's  goods  as  the 
goods  of  the  plaintiff,  that  is  to  say,  imposition  on  the  public,  be- 
comes the  test  of  the  property  in  the  trade-mark  having  been  invaded 
and  injured,  and  not  the  ground  on  which  the  court  rests  its  juris- 
diction." 

P.  142.  "It  is  correct  to  say  that  there  is  no  exclusive  ownership 
of  the  symbols  which  constitute  a  trade-mark,  apart  from  the  use  or 
application  of  them  ;  but  the  word  '  trade-mark  '  is  the  designation 
of  these  marks  or  symbols  as  and  when  applied  to  a  vendible  com- 
modity, and  the  exclusive  right  to  make  such  user  or  application  is 
rightly  called  property.  The  true  principle,  therefore,  would  seem 
to  be,  that  the  jurisdiction  of  the  court  in  the  protection  given  to 
trade-marks  rests  upon  property;  and  that  the  court  interferes  by 
injunction,  because  that  is  the  only  mode  by  which  property  of  this 
description  can  be  effectually  protected." 

P.  144.  "It  is  true  that  a  name  or  the  style  of  a  firm  may  by 
long  usage  become  a  mere  trade-mark,  and  cease  to  convey  any  rep- 
resentation as  to  the  fact  of  the  person  who  makes,  or  the  place  of 
manufacture ;  but  where  any  symbol  or  label  claimed  as  a  trade- 
mark is  so  constructed  or  worded  as  to  make  or  contain  a  distinct 
assertion  which  is  false,  I  think  no  property  can  be  claimed  in  it,  or, 
in  other  words,  the  exclusive  use  of  it  cannot  be  maintained." 

P.  148.  "  I  cannot  receive  it  as  a  rule,  either  of  morality  or  equity, 
that  a  plaintiff  is  not  answerable  for  a  falsehood,  because  it  may  be 
so  gross  and  palpable  as  that  no  one  is  likely  to  be  deceived  by  it.  If 
there  be  a  wilful  false  statement,  I  will  not  stop  to  inquire  whether 
it  be  too  gross  to  mislead." 

Per  Lord  Cran worth  (11  H.  L.  C.  533).  "The  right  which  a 
manufacturer  has  in  his  trade-mark  is  the  exclusive  right  to  use  it 
for  the  purpose  of  indicating  where,  or  by  whom,  or  at  what  manu- 
factory, the  article  to  which  it  is  affixed  was  manufactured." 

"  But  I  further  think  that  the  right  to  a  trade-mark  may,  in  gen- 
eral, treating  it  as  property,  or  as  an  accessory  of  property,  be  sold 
and  transferred  upon  a  sale  and  transfer  of  the  manufactory  of  the 
goods  on  which  the  mark  has  been  used  to  be  affixed,  and  may  be 

126 


LEATHER  CLOTH  CO.  V.  AMERICAN  LEATHER  CLOTH  CO. 

lawfully  used  by  the  purchaser.  Difficulties,  however,  may  arise 
where  the  trade-mark  consists  merely  of  the  name  of  the  manufact- 
urer." 

P.  535.  •"  No  general  rule  can  be  laid  down  as  to  what  is  or  is 
not  a  mere  colorable  variation.  All  that  can  be  done  is  to  ascertain 
in  every  case,  as  it  occurs,  whether  there  is  such  a  resemblance  as  to 
deceive  a  purchaser  using  ordinary  caution." 

Per  Lord  Kingsdown  (p.  538).  "A  man  may  mark  his  own 
manufacture,  either  by  his  name,  or  by  using  for  the  purpose  any 
symbol  or  emblem,  however  unmeaning  in  itself;  and  if  such  symbol 
or  emblem  comes  by  use  to  be  recognized  in  trade  as  the  mark  of  the 
goods  of  a  particular  person,  no  other  trader  has  a  right  to  stamp  it 
upon  his  goods  of  a  similar  description." 

P.  542.  "  If  a  manufacturing  house  uses  the  name  of  a  firm,  and 
stamps  the  name  of  its  firm  upon  its  goods,  though  the  name  of  the 
firm  no  longer  represents  the  same  persons  as  at  first,  it  is  no  fraud 
upon  the  public." 

P.  544.  "  If  the  trade-mark  represents  the  article  as  protected  by 
patent,  when  in  fact  it  is  not  so  protected,  I  cannot  think  that  it  can 
make  any  difference  whether  the  protection  never  existed  or  has 
ceased  to  exist." 

"  Though  a  man  may  have  a  property  in  a  trade-mark,  in  the  sense 
of  having  a  right  to  exclude  any  other  trader  from  the  use  of  it  in 
selling  the  same  description  of  goods,  it  does  not  follow  that  he  can  in 
all  cases  give  another  person  a  right  to  use  it,  or  to  use  his  name."  * 

1  The  cases  having  a  bearing  upon  had  ever  existed ;  but  afterwards,  in 

the  question  whether  the  use  of  words  the  same  year,  when  considering  the 

importing  that  an  article  is  patented  case  of  a  patent  which  had  expired, 

when  it  is  not  were  reviewed  by  Judge  suggested  some  qualification  of  the 

Cadwallader  in  Cons.  Fruit  Jar  Co.  v.  general  doctrine.  But  such  doubts  or 

Dorflinqer,  444,  as  follows  :  —  hesitations  were  removed  in  England 

"In  cases  prior  to  1863,  before  by  the  case  of  The  Leather  Cloth  Co.  v. 
English  vice-chancellors,  the  authority  The  American  Leather  Cloth  Co.,  in  the 
of  Sykes  v.  Sykes  could  not  be  disre-  House  of  Lords  in  1865,  affirming  a  de- 
garded ;  and  there  was  great  hesitation  cree  made  by  Lord  Chancellor  West- 
in  holding  directly  that  a  trade-mark  bury,  in  1863.  In  this  case  Lord  Kings- 
representing  an  article  as  patented,  down  said  :  '  If  a  trade-mark  represents 
when  in  fact  it  was  not  securely  pro-  an  article  as  protected  by  a  patent,  when 
tected  by  a  patent,  was  invalid  in  in  fact  it  is  not  so  protected,  it  seems  to 
equity.  Thus  Vice-Chancellor  Wood,  me  that  such  a  statement  prima  facie 
afterwards  Lord  Hatherley,  in  1853,  amounts  to  a  misrepresentation  of  an 
intimated  an  opinion  that  the  trade-  important  fact,  which  would  disentitle 
mark  would  be  invalid  where  no  patent  the  owner  of  the  trade-mark  to  relief  in 

127    - 


WILLIAMS  V.  SPENCE. 

224.  The  Leather  Cloth  Co.  (Limited)  v.  Hirschfeld.    (2.) 
July  16,  1863.      Wood,  V.C.  —  lH.fr  M.  295  ;  11  W.  R.  933. 

THE  defendant  having  been  directed  to  account  for  all 
goods  sold  by  him  impressed  with  a  particular  mark : 

Held,  that  he  was  compellable  to  disclose  the  names  of  all 
persons  to  whom  he  had  sold  goods  so  marked,  and  that  if  he 
could  not  give  such  information  precisely,  he  might  then,  and 
then  only,  be  required  to  disclose  the  names  of  all  customers 
to  whom  he  had  sold  goods  which  he  would  not  positively 
swear  to  have  been  unmarked. 


225.   Williams  v.  Spence. 

July,  1863.     N.  Y.   Super.  Ct. :    Monell,  J.—  25  How.  Pr.  366  ;    R.  Cox, 

305. 

THE  plaintiff  being  a  manufacturer  of  soap,  which  he  sold 
under  the  name  of  "  Genuine  Yankee  Soap"  the  defendant 
sold  other  soap  under  the  same  name,  and  in  boxes,  and  with 
labels,  hand-bills,  etc.,  only  colorably  differing  from  the  plain- 
tiff's. 

On  motion  by  the  plaintiff,  injunction  granted  to  restrain 
the  defendant  from  infringing  the  plaintiff's  rights. 

a  court  of  equity  against  any  one  who  tide,  such  as  patent  leather,  or  patent 
pirated  it ; '  and  added,  that  he  would  thread,  whose  designation  of  this  kind 
have  great  difficulty  in  assenting  to  the  is  in  constant  use,  though  no  one  sup- 
distinction  suggested  by  Vice-Chancel- '  poses  that  it  is  thereby  intended  to  cori- 
lor  Wood,  in  the  case  which  had  been  vey  the  impression  that  the  subject  is 
cited.  Lord  Kingsdown  here  succintly  protected  by  any  patent.  So  after  a 
restated  the  opinion  of  Lord  Westbury,  patented  privilege  has  long  since  ex- 
in  the  Court  of  Chancery  ;  and  Lord  pired,  such  a  designation  may  have  be- 
Westbury  adhered  to  it  in  the  Court  of  come  a  general  or  special  word  of  art. 
Appeal.  But  such  exceptions  only  confirm  the 

"An  exception  to  this  rule  of  deci-  rule  of  decision  in  ordinary  cases." 

sion  had  been  previously,  and  has  been  See  Pidding  v.  How,  60. 
since,  recognized  in  the  case  of  an  ar- 

128 


WOTHERSPOON  &  CO.  V.  GRAY  &  CO. 

226.  Braham  v.  Bustard. 

August  3,  1863.     Wood,  V.  C.  —  1  H.  §•  M.  447;  9  L.  T.  N.  S.  199  ;   11 
W.   R.  1061  ;  2  N.  R.  572. 

THE  plaintiffs  being  the  manufacturers  of  a  kind  of  soap 
which  they  sold  under  the  name  of  "  Excelsior  White  Soft 
Soap"  the  defendants  began  to  sell  another  soap  of  their 
own  make  as  "  Bustard  and  Co.'s  Excelsior  White  Soft 
Soap" 

On  motion  by  the  plaintiffs : 

Held,  (1.)  that  the  word  "Excelsior"  was  a  fancy  name 
and  not  a  mere  word  of  quality,  as  "  superfine  "  or  "  supe- 
rior ;"  (2.)  that  the  plaintiffs'  right  to  an  injunction  was  not 
affected  by  the  fact  that  the  defendants  had  never  used  the 
word  except  in  conjunction  with  their  firm  name,  or  by  the 
fact  that  the  plaintiffs  had  recently  adopted  a  distinctive  trade- 
mark ;  (3.)  and  that  an  injunction  must  be  granted  to  re- 
strain the  defendants  from  selling  their  soap  under  the  name 
given  by  the  plaintiffs  to  their  article. 

"  The  additional  trade-mark  adopted  by  the  plaintiffs  in  March 
last  does  not,  to  my  mind,  affect  the  question.  The  name  '  Con- 
veyance Company '  (in  Knott  \.  Morgan)  was  not  a  trade-mark,  and 
I  cannot  hold  it  to  be  auy  justification  for  a  defendant  to  say  '  the 
plaintiff  has  two  ways  of  identifying  his  goods,  and  I  have  only  stolen 
one  of  them.' " 


227.  Wotherspoon  &  Co.  v.  Gray  &  Co. 
November  10,  1863.     Ct.  of  Session. —  Ct.  of  Sess.  Cos.  3d  Ser.  II.  38. 

THE  plaintiffs  being  manufacturers  of  confectionery,  who 
sold  lozenges  of  their  make  in  packets  bearing  the  words 
"  Wotherspoon 's  Machine-made  Cinnamon  (or  Clove,  Musk, 
Rose,  etc.)  Victoria  Lozenges  "  on  the  front,  and  announce- 
ments as  to  their  process  of  manufacture,  etc.,  on  the  side,  the 
defendants  sold  lozenges  of  their  own  in  packets  with  the 
words  "  Cinnamon  Victoria  Lozenges "  on  the  front,  and 
9  129 


PONSARDIN  V.  PETO. 

"  John   Gray  $•  Co's  Machine-made   Victoria  Lozenges  "  on 
the  side. 

Interdict  to  restrain  the  defendants  from  using  the  name 
"  Victoria"  and  from  imitating  the  plaintiffs'  announce- 
ments, refused,  on  the  ground  that  the  name  "  Victoria'1''  was 
in  common  use,  and  that,  in  any  case,  the  name  "  Gray  £• 
Co.'s  Victoria  Lozenges  "  was  distinguishable  from  "  Wother- 
spooris  Victoria  Lozenges"  and  that  the  defendants'  wrappers 
and  announcements  thereon  were  essentially  different  from 
the  plaintiffs'. 


228.  Kinahan  v.  Bolton. 
December  10,  1863.     Brady,  C.  of  I.—  15  Ir.  Ch.  75. 

THE  petitioners  being  makers  of  whiskey,  which  they  sold 
in  bottles,  etc.,  labelled  with  the  letters  "  L.  L"  and  a  coro- 
net, the  respondent  sold  whiskey  in  bottles,  etc.,  labelled  with 
the  same  letters. 

On  petition,  injunction  granted  to  restrain  the  respondent 
from  selling  whiskey  marked  with  those  letters  ;  and 

Held,  that  acquiescence  in  the  infringement  of  the  trade- 
mark was  not  established  by  proof  of  the  publication  of  ad- 
vertisements which,  though  in  some  instances  they  infringed 
the  petitioners'  rights,  did  not  do  so  uniformly  or  contin- 
uously. 

"Iii  such  suits,  in  order  to  found  the  jurisdiction  of  this  court, 
there  must  be  established,  first,  the  existence  of  the  trade-mark  ; 
next,  the  fact  of  an  imitation,  whether  a  direct  imitation,  or  one  with 
such  variations  that  the  court  must  regard  them  as  merely  colorable  ; 
and,  thirdly,  the  fact  that  the  imitations  were  made  without  license,  or 
anything  that  this  court  could  regard  as  acquiescence  in  their  use." 


229.  Ponsardin  v.  Peto  ;  Ex  parte  Uzielli. 

December  10,  1863.     Romilly,  M.  R.  —  33  Beav.  642  ;    33  L.  J.  Ch.  371  ; 
10  Jur.  N.  S.  6  ;  9  L.  T.  N.  S.  567  ;  12  W.  R.  198;  3  N.  R.  237. 

AN  injunction  having  been  granted  to  restrain  a  dock  com- 
pany from   parting  with  wine   spuriously  marked  with  the 

plaintiffs'  mark  : 

130 


BROWNE  V.  FREEMAN. 

On  motion  by  a  third  person  who  had  advanced  money  on 
the  dock-warrants,  in  ignorance  of  the  spuriousness  of  the 
marks,  for  the  wine  to  be  delivered  to  -him  : 

Held,  that  the  applicant  was  entitled  to  have  the  wine  de- 
livered to  him,  on  its  being  re-corked,  but  that  he  must  pay 
the  costs  of  the  application. 

"  The  dock  company  would  have  the  first  charge  on  the  wine  for 
their  expenses,  Mr.  Uzielli  the  second  for  his  advances  and  his  costs, 
and  the  plaintiffs  the  third  for  their  costs  of  suit." 

23O.  Browne  v.  Freeman.     (1.) 
January  11,  July  12,  1864.      Wood,  V.  C.  — 12  W.  R.  305  ;  4  N.  R.  476. 

THE  plaintiff  being  the  inventor  of  a  medicine  to  which  he 
gave  the  name  of  "  Chlorodyne"  and  which  he  sold  in  bottles 
labelled  with  the  words  "  Dr.  J.  Collis  Browne  s  Chlorodyne" 
and  "  The  only  Genuine  Chlorodyne"  the  defendant  began  to 
sell  a  preparation  as  "  Chlorodyne"  and  afterwards  as  "  The 
Original  Chlorodyne"  the  plaintiff  having  in  the  mean  time 
procured  the  dismissal  with  costs  of  a  bill  which  he  had 
filed  to  restrain  the  defendant  from  using  the  name  "  Chlo- 
rodyne" 

On  motion  for  an  injunction  (12  W.  R.),  and  at  the  hear- 
ing of  the  cause  (  4  N.  R.)  : 

Held,  (1.)  that  although  the  word  "  Chlorodyne "  might 
originally  have  been  protected  as  a  fancy  name,  the  plaintiff 
had  abandoned  all  claim  to  an  exclusive  right  in  it  by  dis- 
missing the  suit  which  he  had  commenced  to  restrain  the  use 
of  it ;  and  (2.)  that  the  plaintiff  was  not  entitled  to  an  in- 
junction to  restrain  the  defendant  from  styling  his  "  The 
Original  Chlorodyne"  since  there  was  no  evidence  that  the 
assumption  of  that  title  by  him  caused  his  medicine  to  be 
supposed  to  be  of  the  plaintiff's  manufacture.  No  costs 
given.1 

1  See  Cocks  v.  Chandler,  351,  where  the  word  "  original '  was  protected. 

131 


PHALON  V.  WRIGHT. 

231.  Taylor  v.  Bemis. 
January,  1864.     U.  S.  C.  C.  N.  Dt.  of  III.:  Drummond,  J.  —  4  Biss.  406. 

SUIT  by  execution  creditors  of  H.  V.  Bemis,  one  of  the 
partners  in  the  firm  of  "  Downer,  Semis  £  (70.,"  brewers,  for 
a  sale  of  the  defendant's  interest  in  the  name  or  trade-mark 
of  Downer,  Bemis  &  Co. 

Held,  that  such  sale  must  be  refused,  on  the  ground  that 
the  defendant's  interest  in  the  mark  was  merely  a  right  to  a 
part  of  it,  and  that  such  right  was  of  no  value  apart  from  the 
connection  of  the  partnership  business. 

232.  Phalon  v.  Wright. 
1864.     Phila.  C.  P.  :   Thompson,  P.J.—  5  Phila.  464  ;   R.  Cox,  307. 

THE  plaintiff  being  the  maker  of  a  perfume,  which  he  sold 
under  the  name  of  "  Night  Blooming  Cereus,"  the  defendants 
sold  another  perfume  under  the  name  of  "  Wright's  Night 
Blooming  Cereus" 

On  motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendants  from  using  the  name : 

Held,  (1.)  that  the  perfume  not  being  made  from  that 
flower,  the  use  of  the  title  was  a  misrepresentation  ;  (2.) 
that,  if  the  perfume  had  been  made  from  the  flower,  the 
name  would  have  been  merely  descriptive  of  the  origin  of  the 
perfume,  and  therefore  could  not  be  a  valid  trade-mark ;  (3.) 
that  the  labels  were  not  similar,  and  that  the  defendants' 
name  appeared  prominently  on  theirs  ;  (4.)  and  that  the  in- 
junction must  be  refused. 

"  The  trade-mark,  to  be  capable  of  an  exclusive  use,  must  be  such 
as  will  identify  the  article  to  which  it  is  affixed  as  that  of  the  person 
naming  it,  and  distinguish  it  from  others.  A  word  which  is  the  name 
of  the  article,  or  indicates  its  quality,  cannot  be  so  appropriated. 
Every  one  has  the  right  to  manufacture  the  same  article  and  to  call  it 
by  its  name  or  descriptive  character."  * 

1  See  Pidding  v.  How,  60. 

132 


McANDREW  v.  BASSETT. 

233.  McCardel  v.  Peck. 
March,  1864.     N.  Y.  Sup.  Ct.  —  28  How,  Pr.  120;    R.  Cox,  312. 

THE  "  McCardel  House"  having  been  established  and  car- 
ried on  by  W.  Hitchcock  for  the  benefit  of  the  plaintiff's  hus- 
band, the  plaintiff,  after  the  death  of  her  husband,  required 
the  defendant,  who  had  purchased  the  business  from  W. 
Hitchcock,  to  discontinue  the  use  of  the  name. 

Injunction  granted  to  restrain  the  defendant  from  using  the 
name,  it  having  been  used  by  W.  Hitchcock  and  the  defend- 
ant by  virtue  of  a  license,  which  was  capable  of  being,  and 
had  been  revoked  ;  and  an  attachment  for  contempt  issued 
against  the  defendant,  who  had  violated  the  injunction  by 
continuing  to  use  the  name.1 


234.  Me  Andrew  v.  Bassett. 

March  4,  May  7,  1864.  Wood,  V.  C.  —  33  L.  J.  Cfu  561  ;  10  Jur.  N.  £ 
492;  10  L.  T.  N.  S.  65,  442;  4  N.  R.  12.  Lord  Westlury,  C.  — 4  De 
G.,  J.  tf  S.  380;  33  L.  J.  Ch.  566 ;  10  Jur.  N.  S.  550  ;  10  L.  T.  N.  S. 
442  ;  12  W.  R.  777 ;  4  N.  R.  123. 

THE  plaintiffs  having  recently  begun  to  sell  liquorice  of 
their  manufacture  stamped  with  the  word  "  Anatolia,"  the 
defendants  began  to  sell  other  liquorice  under  the  same 
stamp. 

Suit  for  an  injunction  to  restrain  the  defendants  from  so 
doing. 

Held,  (1.)  that  the  word  "  Anatolia  "  was  a  good  trade- 
mark on  liquorice,  being  used  as  a  fancy  name,  and  not  as  in- 
dicative of  the  origin  of  the  liquorice  ;  (2.)  that  the  plaintiffs 
had  acquired  an  exclusive  right  therein,  though  they  had  only 
used  it  for  about  six  weeks  ;  (3.)  (10  Jur.  N.  S.  495)  that  it 
was  not  a  case  in  which  an  account  need  be  directed ;  (4.) 
that  the  defendants  must  pay  costs,  although  they  had  offered 
to  submit,  since  they  had  not  offered  to  pay  the  costs  of  the 
proceedings  up  to  the  time  of  the  offer. 

1  See  Howard  v.  Henriques,  108. 

133 


MOET  v.  COUSTON. 

Per  L.  C.  (p.  384).  "  Au  element  of  the  right  to  the  property  in 
a  trade-mark  may  be  represented  as  being  the  fact  of  the  article  being 
in  the  market  as  a  vendible  article,  with  that  stamp  or  trade-mark,  at 
the  time  when  the  defendants  imitate  it.  The  essential  ingredients 
for  constituting  an  infringement  of  that  right  probably  would  be  found 
to  be  no  other  than  these  :  First,  that  the  mark  has  been  applied  by 
the  plaintiffs  properly,  that  is  to  say,  that  they  have  not  copied  any 
other  person's  mark,  and  that  the  mark  does  not  involve  any  false 
representation  ;  secondly,  that  the  article  so  marked  is  actually  a  ven- 
dible article  in  the  market ;  and  thirdly,  that  the  defendants,  know- 
ing that  to  be  so,  have  imitated  the  mark  for  the  purpose  of  passing 
in  the  market  other  articles  of  a  similar  description." 

P.  386.  "  Property  in  the  word  (Anatolia)  for  all  purposes  can- 
not exist ;  but  property  in  that  word,  as  applied  by  way  of  stamp 
upon  a  particular  vendible  article,  as  a  stick  of  liquorice,  does  exist 
the  moment  the  article  goes  into  the  market  so  stamped,  and  there 
obtains  acceptance  and  reputation  whereby  the  stamp  gets  currency 
as  an  indication  of  superior  quality,  or  of  some  other  circumstance 
which  renders  the  article  so  stamped  acceptable  to  the  public."  1 


235.  Moet  v.  Couston. 

May  3,  1864.     Romilly,  M.  R.  —  33  Beav.  578;  10  L.  T.N.  S.  395;  4  N. 

R.  86. 

THE  defendants  having  purchased  and  resold  in  England  a 
quantity  of  the  plaintiffs'  champagne,  marked  as  "Meet's" 
the  plaintiffs  filed  a  bill  for  an  injunction  and  an  account,  and 
after  answer  the  defendants  offered  to  submit  to  an  injunc- 
tion, each  party  paying  his  own  costs. 

Held,  that  the  injunction  must  be  granted,  but  no  account 
and  no  costs,  the  plaintiffs  having  asked  for  an  account,  to 
which  they  were  not  entitled. 

10  L.  T.  N.  S.  396.  "  If  a  man  manufactures  goods  himself,  and 
puts  upon  them  the  trade-mark  of  another,  though  he  may  not  know 

1  The  decision  in  this  case  that  the     tion  that  as  used  it  was  not  geograph- 
word  "Anatolia"  was   a    valid  trade-     ical. 
mark  rests  squarely  upon  the  assump- 

134 


EDGINGTON  v.  EDGINGTOK 

to  whom  that  mark  belongs,  he  must  at  least  know  that  he  has  him- 
self no  right  to  the  mark.  That  knowledge  makes  him  liable  to'ac- 
count  for  the  profits  he  may  have  realized  by  his  conduct.  But  if  a 
man  buys  goods  from  a  third  party,  believing  them  to  be  geuume, 
while  in  fact  they  are  spurious,  it  is  not  until  he  has  been  told  that 
they  are  so  that  he  can  be  considered  to  be  guilty  of  any  fraud,  or  to 
be  liable  to  render  any  account." 

33  Beav.  581.  "  If  the  defendants  had  offered  to  submit  to  the 
injunction  and  to  pay  the  costs,  and  the  plaintiffs  had  afterwards 
brought  the  case  to  a  hearing,  I  should  have  given  the  defendants 
their  costs  subsequent  to  that  offer." 


236.  The  Colonial  Life  Assurance  Company  v.  The  Home 
and  Colonial  Assurance  Company  (Limited). 

May  9,  1864.     Romilly,  M.  R.—  33  Beav.  548;  33  L.  J.  Ch.  741;  10  Jur. 
N.  S.  967;  10  L.  T.  N.  S.  448;  12  W.  R.  783;  4  N.  R.  129. 

MOTION  for  an  injunction  to  restrain  the  defendants  from 
using  their  name  (as  above),  or  any  other  name  resembling 
that  of  the  plaintiffs,  refused,  on  the  ground  that  the  real 
object  of  the  motion  was  to  obtain  a  monopoly  of  the  word 
"Colonial" 

237.  Edgington  v.  Edgington. 
November  7,  1864.     Wood,  V.  C.  —  10  L.  T.  N.  S.  299. 

INJUNCTION  to  restrain  the  defendant  from  falsely  repre- 
senting himself  to  be  carrying  on  the  plaintiff's  business,  or  to 
be  carrying  on  business  in  connection  with  or  in  succession  to 
him,  refused,  but  without  costs ;  the  only  case  in  which  an  at- 
tempt at  personation  was  proved  being  a  case  in  which  the 
defendant  had  opened  a  letter  addressed  to  the  plaintiff,  and 
had  attempted,  but  without  success,  to  obtain  the  custom 
thereby  offered  to  the  plaintiff. 

135 


HUNT  v.  MANIERE. 

238.  Johnson  v.  Helleley. 

November  8,  December  21,  1864.  Romilly,  M.  R. — 34  Beav.  63;  34  L. 
J.  Ch.  32;  10  Jur.  N.  S.  1041;  11  L.  T.  N.  S.  295;  13  W.  R.  38;  5  N. 
R.  4.  Knight  Bruce  and  Turner,  L.  JJ.  —  2  De  G.,  J.  If  S.  446;  34  L. 
J.  Ch.  179 ;  11  L.  T.  N.  S.  581;  13  W.  R.  220;  5  N.  R.  211. 

PARTNERSHIP  suit.  The  good-will  of  a  partnership  busi- 
ness carried  on  under  the  name  of  "  /Samuel  Johnson  $  Sons  " 
having  been  directed  to  be  sold,  upon  the  death  of  one  of  the 
partners,  in  a  suit  commenced  by  the  surviving  partner  for  the 
purpose  of  having  the  business  wound  up,  and  the  chief  clerk 
proposing  to  give  the  purchaser  the  exclusive  right  to  hold 
himself  out  as  the  successor  of  the  firm  of  "  Samuel  Johnson 
£  Sons:" 

Held,  that  the  surviving  partner  retained  the  right  to  set 
up  a  similar  business  in  the  old  neighborhood,  and  that  the 
advertisements  and  particulars  of  sale  must  give  purchasers 
notice  to  that  effect. 


239.  Hunt  v.  Maniere. 

Decembers,  1864;  January  28,  1865.  Romilly,  M.  R.  —  34  Beav.  157; 
34  L.  J.  Ch.  142  ;  11  Jur.  N.  S.  28;  11  L.  T.  N.  S.  469  ;  13  W.  R.212; 
5N.R.  181.  Knight  Bruce  and  Turner,  L.  JJ.—  34  Z.  /.  Ch.  144; 
11  Jur.  N.  S.  73 ;  11  L.  T.  N.  S.  723;  13  W.  R.  363  ;  5  N.  R.  295. 

THE  plaintiffs  being  wharfingers,  with  whom  spurious 
champagne,  marked  with  a  counterfeit  brand  of  "  Veuve 
Clicquot,  Ponsardin  $  Co.,"  was  warehoused,  and  who  had 
notice  of  the  spurious  mark  and  of  the  intention  of  the  in- 
jured party  to  apply  for  an  injunction,  refused  to  deliver  up 
the  wine  to  the  indorsee  of  the  dock  warrants,  who  thereupon 
commenced  an  action  for  damages  against  them. 

Suit  for  an  injunction  to  restrain  the  action. 

Held,  that  the  wharfingers  were  justified  in  acting  as  they 
had  done,  and  that  the  injunction  must  be  granted. 

136 


ORR  EWING  V.  CHOONEELOLL  MULLICK. 

240.  Binninger  v.  Wattles. 

January,  1865.     N.   Y.   C.  P.:  Brady,  J.  —  28   How.  Pr.  206;  R.  Cox, 

318. 

THE  plaintiffs  being  vendors  of  gin,  which  they  sold  in 
bottles  labelled  with  the  words  "  Old  London  Dock  Grin"  the 
defendant  sold  other  gin  similarly  labelled. 

On  motion  by  the  defendant  to  dissolve  an  injunction  which 
had  been  granted  to  restrain  him  from  infringing  the  plain- 
tiffs' rights : 

Held,  (1.)  that  the  name  "  Old  London  Dock  Gin  "  was 
descriptive  of  the  article,  and  therefore  could  not  be  ex- 
clusively appropriated;  and  further,  that  any  person  of  the 
same  name  could  not  be  prevented  from  selling  "  Binninger* 's 
Old  London  Dock  Gin  ;  "  (2.)  but  that  the  motion  must  be 
refused,  on  the  ground  that  the  defendant's  labels  were  in- 
tended and  calculated  to  deceive. 


241.  Orr  Swing  v.  Chooneeloll  Mullick. 
January  16,  1865.     Bengal  High  Ct.  :    Morgan,  J.  —  Cor.  150. 

THE  plaintiffs  being  a  Glasgow  firm  of  manufacturers  of 
cotton  goods,  which  they  exported  to  India  and  sold  there 
with  certain  trade-marks  in  the  form  of  tickets  affixed,  the 
defendant,  a  dealer  in  the  Burra  Bazaar  at  Calcutta,  sold 
goods  there  similarly  marked. 

On  motion  by  the  plaintiffs,  injunction  granted  to  restrain 
the  defendant  from  so  doing,  notwithstanding  that  he  had  not 
himself  affixed  the  spurious  marks  to  his  goods,  but  had  pur- 
chased the  goods  so  marked  from  the  importers,  and  was,  fur- 
ther, only  proved  to  have  sold  goods  spuriously  marked  on 
one  occasion,  and  that  to  the  plaintiffs'  agent.1 
1  See  Orr  v.  Johnston,  646. 

137 


HARRISON   V.  TAYLOR. 

242.  Montague  v.  Moore. 
March  1,  18G5.     Wood,  V.  C.  —  Seton,  Uh  ed.  238. 

THE  plaintiffs  being  the  managers  of  the  "  Christy's  Min- 
strels," the  defendants,  who  had  been  members  of  their  com- 
pany, represented  themselves  to  be  "  The  Christi/'s  Minstrels" 

On  motion  by  the  plaintiffs,  injunction  granted  to  restrain 
the  defendants  from  representing  themselves  to  be  the  suc- 
cessors or  representatives  of  that  company,  and  from  repre- 
senting the  plaintiffs  to  have  been  connected  with  the  defend- 
ants' company.1 

» 

243.  Southern  v.  Reynolds. 
March  10.  1865.     Wood,  V.  C.  —  12  L.  T.  N.  S.  75. 

THE  plaintiff  being  a  manufacturer  of  "  Southoni's  Brose- 
ley  Pipes,"  the  defendant  took  into  his  employment  a  work- 
man of  that  name  and  from  that  place,  and  sold  pipes  under 
the  same  name. 

Suit  for  an  injunction. 

ITeld,  that  the  plaintiff  was  entitled  to  an  injunction  to  re- 
strain the  defendant  from  selling  clay  tobacco  pipes  in  boxes, 
etc.,  labelled  so  as  to  indicate  that  they  were  manufactured  by 
Southern  of  Broseley,  notwithstanding  that  the  defendant  had 
a  workman  of  that  name  and  from  that  place  in  his  employ, 
and  notwithstanding  that  the  plaintiff's  brother,  who  did  not 
join  in  the  suit,  had  an  equal  right  to  the  use  of  the  mark 
"  Southern,  Broseley,"  with  himself.  Account  also  granted, 
and  an  inquiry  as  to  damages.2 


244.  Harrison  v.  Taylor. 
May  1,  1865.     Wood,  V.  C.  —  ll  Jur.  N.  S.  408 ;  12  L.  T.  N.  S.  339. 

THE  plaintiffs  being  manufacturers  of  mustard,  which  they 
sold  with  a  label  affixed,  the  conspicuous  feature  of  which  was 
the  figure  of  an  ox,  the  .defendants  sold  other  mustard  with 

1  See  Christy  T.  Murphy,  137.  2  See  Burgess  v.  Burgess,  117. 

138 


THE  CORRESPONDENT  NEWSPAPER  CO.  v.  SAUNDERS. 

a  very  similar  label,  but  having  their  own  name  substituted 
for  the  plaintiffs'. 

On  motion  by  the  plaintiffs,  injunction  granted  to  restrain 
the  defendants  from  infringing  their  rights,  notwithstanding 
that  there  was  some  evidence  that  a  certain  class  of  customers 
were  in  the  habit  of  ordering  "Harrison's"  mustard,  and  not 
"  ox  "  mustard,  and  although  the  plaintiffs  had  delayed  com- 
mencing proceedings  from  August,  1863,  till  May,  1864. 

But  Held,  that  no  account  of  profits  before  the  filing  of  the 
bill  could  be  given,  on  account  of  the  plaintiffs'  delay. 


245.  Swift  v.  Dey. 

May,  1865.     N.  Y.  Super,  a.  — 4  Robertson,  611;  R.  Cox,  319. 
AN  injunction  having  been  granted  to  restrain  the  defend- 
ant from  selling  matches  in  boxes  labelled  in  imitation  of  the 
plaintiff's,  the  defendant  changed  his  labels,  but,  as  the  plain- 
tiff thought,  insufficiently. 

Motion  by  the  plaintiff  for  the  committal  of  the  defendant 
for  contempt,  refused,  on  the  ground  that  the  defendant's  new 
label  would  not  deceive  ordinary  purchasers. 

Per  Robertson,  C.  J.  "  It  is  the  unwary,  and  not  the  wary,  who 
are  to  be  protected,  as  most  likely  to  be  taken  in  by  the  counterfeit." 

Per  McCunn,  J.  "  The  great  principle  laid  down  and  applied  in 
all  the  cases  of  trade-marks  is,  that  if  persons  of  ordinary  under- 
standing purchasing  the  article  would  be  placed  on  their  guard,  and 
would  be  led  to  inquire  whether  they  were  being  deceived  by  the 
article  they  were  purchasing,  that  fact  is  sufficient  for  the  court  to 
refuse  its  interference." 


246.    The    Correspondent   Newspaper    Co.    (Limited)    v. 

Saunders. 

June  1,  1865.      Wood,  V.  C  — 11  Jur.  N.  S.  540;  12  L.  T.  N.  5.540; 

13  W.  R.  804. 

THE  plaintiffs  being  a  company  which  had  been  formed  for 
the  purpose  of  publishing  a  newspaper  to  be  called  The  Cor- 
respondent (which  paper  had  been  registered  at  Stationers' 

139 


GLENNY  V.  SMITH. 

Hall  on  April  8,  1864,  under  5  &  6  Viet.  c.  45,  but  was  not 
issued  till  May  8,  1865,  when  another  entry  was  made  on  the 
register),  the  defendants  registered  a  publication  under  the 
same  title  on  March  3,  1865,  and  published  the  first  number 
as  "  The  Public  Correspondent"  on  May  6,  1865. 

Motion  by  the  plaintiffs  for  an  injunction  to  restrain  the  de- 
fendants from  publishing  any  newspaper  containing  the  word 
"Correspondent "  refused,  on  the  ground  that  (1.)  the  entry  on 
the  register  was  of  no  avail  without  actual  publication ;  (2.)  it 
was  doubtful  whether  in  any  case  registration  would  protect 
the  title  as  being  included  in  the  copyright ;  (3.)  the  differ- 
ence between  the  dates  of  the  respective  first  publications  was 
so  slight  as  to  render  the  exclusive  right  of  the  plaintiffs  in 
the  title,  by  way  of  trade-mark,  too  doubtful  for  an  interlocu- 
tory injunction  to  be  granted ;  (4.)  the  plaintiffs  had  delayed 
giving  the  defendants  notice  of  their  claim  till  they  had 
brought  out  their  own  paper,  eight  days  after  they  became 
aware  of  the  defendants'  intentions. 


247.  Glenny  'v.  Smith. 

July  18,  1865.    Kindersley,  V.C.  —  2  Drew.  Sf  Sm.  476;  11  Jur.  N.  S.  964; 
13  L.  T.  N.  S.  11;  13  W.  R.  1032;  6  N.  R.  363. 

THE  plaintiffs  being  Thresher,  Glenny  &  Co.,  of  152  Strand, 
the  defendant,  one  of  their  employees,  left  their  service  and 
opened  a  shop  in  Oxford  Street,  where  he  placed  his  own 
name  over  the  door,  but  on  the  brass  plates  and  awning  the 
words  '•'•from  Thresher  $  Glenny"  the  word  '•'•from "  being 
in  very  small  letters. 

Injunction  granted  to  restrain  the  defendant  from  using  the 
name  of  the  plaintiffs'  firm  in  any  way  so  as  to  deceive  ;  and 

Held,  that  the  fact  that  the  defendant  had  cautioned  a  shop- 
man not  to  permit  deception  was  evidence  against  the  defend- 
ant, as  showing  that  he  doubted  the  propriety  of  his  use  of 
the  name. 

"  There  is  no  question  but  that  if  a  man,  having  been  in  the  em- 
ployment of  a  firm  of  reputation,  sets  up  in  business  for  himself,  he 

140 


BANKS  V.  GIBSON. 

has  a  right  in  any  way  in  which  he  thinks  fit,  provided  it  is  done  in 
accordance  with  the  rule  I  have  stated  (i.  e.  so  as  not  to  deceive), 
to  iuform  the  public  that  he  has  been  in  such  employment,  and  in 
that  way  to  appropriate  to  himself  some  of  the  benefit  arising  from 
the  reputation  of  his  former  employers.  But  in  so  doing  he  must 
take  especial  care  that  it  is  done  in  such  a  way  as  not  to  mislead  the 
public  to  the  detriment  of  his  former  employers." 

"  It  does  not  signify,  for  the  purpose  of  the  plaintiffs'  right  to  re- 
lief, whether  the  defendant  has  acted  with  a  fraudulent  intention  or 
not ;  it  is  enough  if,  even  without  any  unfair  intention,  he  has  done 

that  which  is  calculated  to  mislead  the  public And  it  is  not 

the  question  whether  the  public  generally,  or  even  a  majority  of  the 
public,  is  likely  to  be  misled ;  but  whether  the  unwary,  the  heedless, 
the  incautious  portion  of  the  public  would  be  likely  to  be  misled." 


248.  Banks  v.  Gibson. 

July  21,  1865.     Romilly,  M.  R.  —  34  Beav.  566;  34  L.  J.  Ch.  591;  11 
Jur.  N.  S.  680;  13  W.  R.  1012;  6  N.  R.  373. 

THE  plaintiff's  husband  and  the  defendant  entered  into  a 
partnership  for  fifteen  years,  as  pencil-makers,  under  the  firm 
name  of  "  Banks  $•  Co. ;  "  at  the  end  of  ten  years  the  plain- 
tiff's husband  died,  and  the  plaintiff  replaced  him  in  the  part- 
nership for  four  years  longer,  when  the  partnership  was  dis- 
solved and  the  assets  were  divided,  but  no  arrangement  was 
come  to  with  respect  to  the  firm  name.  The  plaintiff  con- 
tinued to  carry  on  the  same  business  in  the  same  town,  but 
not  on  the  old  premises,  and  the  defendant  continued  to  do 
so  on  the  old  premises,  each  under  the  old  name  of  "  Banks  $ 
Co." 

Injunction  to  restrain  the  defendant  from  using  the  name 
of  "  Banks  £  Co."  or  "  Banks"  in  his  business,  refused,  with 
costs. 

"  The  name  or  style  of  the  firm  of  '  Banks  &  Co.,'  in  which  the 
defendant  had  been  engaged  for  a  period  of  fourteen  years,  was  an 
asset  of  the  partnership,  and  if  the  whole  concern  and  the  good-will  of 
a  business  have  been  sold,  the  name,  as  a  trade- mark,  would  have 
been  sold  with  it.  If,  by  arrangement,  one  partner  takes  the  whole 

141 


BEARD  V.  TURNER. 

concern,  there  must  be  a  valuation  of  the  whole,  including  the  name 
or  style  of  the  firm.  But  if  the  partners  merely  divide  the  other 
partnership  assets,  then  each  is  at  liberty  to  use  the  name  just  as 
they  did  before.  It  is  the  same  as  if  two  persons,  who  alone  carried 
on  the  business  of  '  Child  &  Co.,'  thought  fit  to  separate,  each  would 
be  entitled  to  use  the  name  by  which  they  carried  on  their  business." 


249.  Derringer  v.  Plate. 
October,  1865.     CaL  Sup.  Ct.  —  29  Cal.  292;  R.  Cox,  324. 

THE  plaintiff  being  a  Philadelphia  pistol-maker,  who  marked 
his  goods  "  Derringer,  Philadel."  the  defendant,  a  Califor- 
nian,  sold  other  pistols  similarly  marked. 

Action  at  law.  Demurrer  overruled,  and  Held,  (1.)  that 
the  right  of  property  in  a  trade-mark  was  not  limited  in  its 
enjoyment  by  territorial  bounds,  so  that  a  person  owning  a 
mark  in  one  American  state  owned  it  in  all,  and,  therefore, 
that  the  plaintiff  could  be  protected  in  California ;  (2.)  that 
the  plaintiff's  right  of  property  in  his  trade-mark  could  be 
protected  at  common  law,  though  he  had  not  complied  with 
the  requirements  of  the  California  Statute  of  1863. 


250.  Bradley  v.  Norton. 
November,  1865.     Conn.  Sup.  Ct.  —  33  Conn.  157;  R.  Cox,  331. 

THE  plaintiff  being  a  manufacturer,  under  an  exclusive 
license  from  the  inventor  and  patentee,  of  an  agricultural 
compost,  which  he  sold  under  the  name  of  "  Coe's  Super- 
phosphate of  Lime,"  the  defendants  sold  an  article  under  the 
same  name. 

Injunction  granted  to  restrain  the  defendants  from  so  doing. 


251.  Beard  v.  Turner. 
November  8,  1865.     Wood,  V.  C.  —  13  Z.  T.  N.  S.  746. 

THE  plaintiffs  being  manufacturers  of  needles,  which  they 
sold  in  packets  labelled  with  a  trade-mark  consisting  of  a 

142 


THE  LEATHER  CLOTH  COMPANY  V.  HIRSCHFELD. 

crest  of  an  elephant's  head  on  a  coronet,  and  the  words 
"  Kirby's  ne  plus  ultra"  the  whole  embossed  in  white  on  a 
blue  ground,  the  defendant  sold  other  needles  with  a  label 
bearing  a  general  resemblance  to  the  plaintiffs'. 

Suit  for  an  injunction  to  restrain  the  defendant  from  infring- 
ing the  plaintiffs'  rights. 

Held,  (1.)  that  the  words  "  ne  plus  ultra"  and  the  white 
device  embossed  on  blue  were  proved  to  be  common  to  the 
trade ;  (2.)  that  a  trade-mark  might  consist  of  a  crest,  but 
that  the  defendant,  having  used  a  lion's  head  instead  of  an 
elephant's  head,  and  having  placed  "  Turner  $  Co"  in  place 
of  "  Kirby  $Co."  the  other  elements  being  common,  not  only 
to  the  parties,  but  to  the  trade  generally,  had  not  adopted  a 
mark  likely  to  deceive  ;  (3.)  that  it  was  an  element  strongly 
in  favor  of  the  defendant's  bona  fides  that  he  had  exhibited 
his  needles  and  labels  side  by  side  with  the  plaintiffs'  at  the 
Exhibition  of  1862  ;  (4.)  that  the  injunction  could  not  be 
granted ;  (5.)  that,  even  if  relief  could  have  been  granted, 
the  plaintiffs,  having  lain  by  for  two  years  after  they  became 
aware  of  what  the  defendant  was  doing,  could  have  had  no 
account  or  costs,  by  reason  of  that  delay. 

252.  The  Leather  Cloth   Company  v.  Hirschfeld.     (3.) 

November  15,  1865.      Wood,  V.  C.  —  L.  R.  1  Eq.  299;  13  L.   T.  N.  S. 
427;  14  W.  R.  78. 

THE  plaintiffs  having  obtained  an  injunction  to  restrain 
the  infringement  of  their  trade-mark,  and  an  inquiry  as  to 
damages,  failed  to  prove  special  damage,  but  claimed  the 
amount  of  profits  which  they  would  have  made  if  they  had 
sold  the  amount  of  cloth  which  the  defendant  had  sold  under 
their  mark. 

On  adjourned  summons :  Held,  that  the  burden  lay  on  the 
plaintiffs  to  prove  special  damage  by  loss  of  custom  or  other- 
wise, and  that  it  could  not  be  assumed  that  the  same  quantity 
would  have  been  bought  of  the  better  goods  at  the  higher 
price  as  had  been  bought  of  the  inferior  goods  at  the  lower 

143 


WILLIAMS  V.  OSBORNE. 

price,  and  therefore  that  in  the  case  in  question  no  damage 
could  be  said  to  have  been  suffered. 


253.  Barnett  v.  Leuchars. 

December  4,  1865.     Stuart,  V.  C.  —  13  L.  T.   N.  S.  495;  14  W.  R. 
166. 

THE  plaintiffs  being  inventors  and  manufacturers  of  toy 
fireworks  called  "  Pharaoh's  Serpents,"  the  defendant  sold 
similar  fireworks,  and  by  the  request  of  his  customers,  and 
without  making  any  false  representations,  placed  them  in  old 
boxes  bearing  the  plaintiffs'  labels. 

Suit  for  an  injunction. 

Held,  (1.)  that  the  injunction  must  be  granted,  notwith- 
standing that  the  defendant  had  placed  the  fireworks  in  those 
boxes  only  at  the  request  of  customers,  and  without  making 
any  false  representations ;  (2.)  but  that  no  costs  could  be 
given,  the  defendant  having  acted  bond  fide,  and  having  dis- 
continued the  objectionable  practice  immediately  on  the  plain- 
tiffs' serving  on  him  their  notice  of  motion. 

"  According  to  the  principle  which  governs  these  cases,  an  owner 
has  an  exclusive  right  to  a  trade-mark  or  label,  and  that  right  is  to 
be  regarded  as  his  property." 


254.    Williams    v.  Osborne. 
December  8,  1865.     Wood,  V.  C.—  13  L.  T.  N.  S.  498. 

THE  plaintiffs  having  purchased  the  perfumery  business 
formerly  carried  on  by  Robert  Hendrie,  deceased,  from  his 
executors,  the  defendants,  who  had  been  long  in  Hendrie's 
employ,  set  up  business  in  partnership,  and  used  labels  and 
made  representations  which  the  plaintiffs  considered  to  amount 
to  an  infringement  of  their  rights. 

Suit  for  an  injunction  to  restrain  the  defendants  from  sell- 
ing their  goods  as  Hendrie's,  or  representing  themselves  as  his 
successors  in  business. 

Held,  (1.)  that,  having  been  long  in  his  service,  they  were 

144 


SEIXO  V.  PROVEZENDE. 

justified  in  placing  on  their  shop  their  names,  with  the  words, 
"from  the  late  R.  Hendrie"  and  in  styling  themselves  on 
placards  "  managers  and  manufacturers  to  the  late  R.  Hen- 
drie"  and  using  Hendrie's  name  on  their  labels,  in  conjunc- 
tion with  their  own,  if  they  only  used  the  name  fairly  and 
without  misstatements  ;  (2.)  that  no  case  of  fraudulent  inten- 
tion was  proved,  though  if  the  defendants  had  continued  to  act 
in  a  certain  way  after  it  had  been  pointed  out  to  them  that  the 
public  were  deceived,  what  was  not  at  first  fraudulent  would 
have  become  so ;  (3.)  that  the  bill  must  be  dismissed,  and 
having  been  filed  too  hastily,  with  costs. 


255.  Chubb  v.  Griffiths. 
December  15, 1865.    Romilly,  M.  R.  —  35  Beav.  127. 

THE  plaintiff  being  a  manufacturer  of  iron  safes,  the  de- 
fendant, being  still  an  infant,  sold  spurious  second-hand  iron 
safes  marked  with  the  plaintiff's  trade-mark. 

Suit  for  an  injunction.  Held,  that,  notwithstanding  his 
infancy,  the  defendant  must  pay  the  costs  of  the  suit,  al- 
though he  submitted  at  once,  and  alleged  that  he  had  acted 

in  ignorance. 

« 

256.   Seixo  v.  Provezende. 

January  22,  1866.     Lord  Crantcorth,  C.  —  L.  R.  1  Ch.  192;  12  Jur.  N.  S. 
215;  14  L.  T.  N.  S.  314  ;  14  W.  R.  357. 

THE  plaintiff  being  a  Portuguese  wine-grower,  who  sold  his 
wine  in  casks  stamped  with  a  crown  and  eagle  and  "  B.  $."  on 
the  head  of  the  cask,  and  a  crown  "  Seixo"  and  a  date  at  the 
bunghole,  from  which  the  wine  had  acquired  the  name  of 
"  Crown  Seixo  "  wine,  the  defendants  sold  their  wine  in  casks 
stamped  on  the  head  and  at  the  bunghole  with  a  crown,  "  C. 
B.,"  "  Seixo  de  Cima,"  and  "  1861." 

Injunction  granted  to  restrain  the  defendants  from  using 
the  brand  of  a  crown  and  "  Seixo"  or  any  other  marks  likely 
to  cause  their  wine  to  be  mistaken  for  the  "  Crown  Seixo  " 
10  145 


AINSWORTH  V.  WALMSLEY. 

wine,  although  the  marks  were  not  similar  when  seen  side 
by  side. 

"  In  order  to  entitle  a  party  to  relief  it  is  by  no  means  necessary 
that  there  should  be  absolute  identity.  What  degree  of  resemblance 
is  necessary  is,  from  the  nature* of  things,  a  matter  incapable  of  defi- 
nition a  priori.  All  that  courts  of  justice  can  do  is  to  say  that  no 
trader  can  adopt  a  trade-mark  so  resembling  that  of  a  rival  as  that 
ordinary  purchasers,  purchasing  with  ordinary  caution,  are  likely  to 
be  misled.  It  would  be  a  mistake,  however,  to  suppose  that  the  re- 
semblance must  be  such  as  would  deceive  persons  who  should  see  the 
two  marks  placed  side  by  side.  The  rule  so  restricted  would  be  of  no 
practical  use.  If  a  purchaser,  looking  at  the  article  offered  to  him, 
would  naturally  be  led,  from  the  mark  impressed  on  it,  to  suppose  it 
to  be  the  production  of  the  rival  manufacturer,  and  would  purchase 
it  in  that  belief,  the  court  considers  the  use  of  such  a  mark  to  be 
fraudulent.  But  I  go  further.  I  do  not  consider  the  actual  physical 
resemblance  of  the  two  marks  to  be  the  sole  question  for  considera- 
tion. If  the  goods  of  a  manufacturer  have,  from  the  mark  or  de- 
vice he  has  used,  become  known  in  the  market  by  a  particular  name, 
I  think  that  the  adoption  by  a  rival  trader  of  any  mark  which  will 
cause  his  goods  to  bear  the  same  name  in  the  market  may  be  as 
much  a  violation  of  the  rights  of  that  rival  as  the  actual  copy  of  his 
device." 


257.  Ainsworth  v.  Walmsley. 

January  24,  1866.     Wood,  V.  C.  —  L.R.I  Efj.  518  ;    35  L.  J.  Ch.  352  ; 
12  Jur.  N.  S.  205;  14  L.  T.  N.  S.  220;    14  W.  R.  363. 

THE  plaintiff's  thread  being  known  in  the  market  by  the 
name  "Ainsworth's  Thread,"  and  marked  with  a  graduated 
scale  of  numbers,  the  defendants  bought  thread  from  a  firm 
of  thread-winders,  who  were  known  to  wind  the  plaintiff's 
thread,  and  sold  this  thread,  bearing  the  winder's  name,  but 
invoiced  under  the  plaintiff's  system  of  numbers,  and  accom- 
panied by  an  assurance  that  it  was  of  the  plaintiff's  make,  to 
a  retail  dealer,  who  relabelled  it  with  the  plaintiff's  name 
and  sold  it  as  his.  The  thread  turned  out  not  to  be  the  plain- 
tiff's, but  inferior  to  it. 

146 


STANDISH  v.  WHITWELL. 

Suit  for  an  injunction  to  restrain  the  defendants  from  selling 
thread,  not  being  the  plaintiff's,  as  his. 

Held,  that  the  defendants  having  sold  the  thread  to  the  re- 
tail dealer  with  the  name  of  the  winders  on  it,  and  not  that 
of  the  plaintiff,  an  injunction  could  not  be  granted  against 
them  ;  but  that  their  conduct  in  making  the  representations, 
and  especially  in  the  use  of  the  plaintiff's  system  of  numbers, 
was  so  improper  as  to  disentitle  them  to  costs. 

"  If  a  manufacturer  does  not  carry  on  a  trade  in  iron,  but  carries 
on  a  trade  in  linen,  and  stamps  a  lion  on  his  linen,  another  person 
may  stamp  a  lion  on  iron  ;  but  when  he  has  appropriated  a  mark  to 
a  particular  species  of  goods,  and  caused  his  goods  to  circulate  with 
this  mark  upon  them,  the  court  has  said  that  no  one  shall  be  at  lib- 
erty to  defraud  that  man  by  using  that  mark,  and  passing  off  goods 
of  his  manufacture  as  being  the  goods  of  the  owner  of  that  mark. 
And  inasmuch  as  the  court  protects  the  owner  of  the  mark,  he  is  en- 
titled to  authorize  another,  when  he  hands  over  his  business  to  him, 
to  place  that  mark  on  his  goods;  that  is  a  right  which,  being  protected 
by  this  court,  may  be  disposed  of  for  value,  may  be  bought  and  sold, 
and  is,  therefore,  in  that  sense  of  the  word,  property." 

"  Is  not  a  man's  name  as  strong  an  instance  of  trade-mark  as  can 
be  suggested  ?  —  subject  only  to  this  inconvenience,  that  if  a  Mr. 
Jones  or  a  Mr.  Brown  relies  on  his  name,  he  may  find  it  a  very  in- 
adequate security,  because  there  may  be  several  other  manufacturers 
of  the  same  name." 


258.  Standish  v.  Whitwell. 
March  9,  1866.      Wood,  V.  C.—  14  W.  R.  512. 

THE  plaintiffs  carrying  on  business  as  "  The  Eagle  Coal 
and  Iron  Company"  and  having  long  stamped  their  iron 
with  the  figure  of  an  eagle,  from  which  it  had  acquired  the 
name  of  "  eagle  iron"  the  defendants  began  to  sell  their  iron 
stamped  with  an  "  eagle  brand." 

On  motion  by  the  plaintiffs  : 

Held,  (1.)  that  an  injunction  must  be  granted  to  restrain 
the  defendants  from  stamping  the  figure  of  an  eagle  on  their 
iron,  notwithstanding  that  they  alleged  it  to  be  their  family 

147 


DICKSON  V.  MCMASTER  &  CO. 


crest ;  (2.)  that  the  costs  of  an  affidavit,  making  charges  of 
fraud  which  were  not  substantiated,  must  be  disallowed. 


259.  Ainsworth  v.  Bentley. 
March  16,  1866.     Wood,  V.  C.  —14  W.  R.  630. 

THE  plaintiff  having  purchased  from  the  defendant  "  Bent- 
ley's  Miscellany,"  on  which  occasion  the  defendant  covenanted 
not  to  publish,  etc.,  any  periodical  of  a  like  nature,  the  de- 
fendant began  to  publish  another  periodical  called  "  Temple 
Bar"  with  his  name  on  the  cover. 

On  motion  by  the  plaintiff: 

Held,  that  an  injunction  must  be  granted  to  restrain  the 
defendant  from  publishing  the  magazine  with  his  name  on  it, 
but  that  he  could  not  be  restrained  from  publishing  the  mag- 
azine without  his  name  appearing  in  connection  with  it.1 


260.  Dickson  v.  McMaster  &  Co. 
May  28,  1866.     Brady,  C.  oj  I.  — 18  Ir.  Jur.  202. 

PARTNERSHIP  suit. 

Held,  that  upon  the'true  construction  of  a  partnership 
agreement,  which  provided  for  accounts  being  taken  of  the 
partnership  "  stock  in  trade,  goods,  chattels,  and  effects,"  the 
continuing  partner  in  the  firms  of  "  Dunbar,  McMaster  & 
Co.,"  and  "  Dunbar,  Dickson  &  Co.,"  who  was  the  owner  of 
the  premises  on  which  the  partnership  business  was  carried 
on,  and  who  was  entitled,  on  the  termination  of  the  partner- 
ship, to  take  over  the  shares  of  the  retiring  partners  at  a  valua- 
tion, was  also  entitled  to  take  over  the  good-will,  trade  name, 
and  trade-marks  of  those  firms,  without  further  payment  on  a 
separate  valuation  of  those  particulars  (those  particulars  being 
held  not  to  be  included  in  the  terra  "  stock  in  trade,  goods, 
chattels,  and  effects"),  but  that  he  was  not  entitled  to  use  the 
names  of  the  retiring  partners. 

1  See  Hogg  v.  Kirby,  10. 
148 


SHERWOOD  V.  ANDREWS. 

261.  Hudson  v.  Bennett. 

June  30,  1866.     Stuart,  V.  C.  — 12  Jur.  N.  S.  519:  14  L.  T.  N.  S.  698; 

14  W.  R.  911. 

THE  plaintiffs  having  obtained  an  interim  injunction  to  re- 
strain the  defendant  from  infringing  their  trade-mark  on  beer, 
the  defendant  offered  to  pay  the  costs  of  the  suit,  as  between 
solicitor  and  client,  and  to  give  an  undertaking  in  the  terms 
of  the  first  part  of  the  prayer  of  the  bill,  amounting  to  an 
offer  of  all  material  relief,  but  refused  to  insert  an  apology  in 
the  newspapers. 

The  plaintiffs  having,  nevertheless,  brought  the  case  to  a 
hearing  : 

Held,  that,  although  the  perpetual  injunction  must  be 
granted,  no  costs  could  be  given,  the  plaintiffs  having  refused 
the  defendant's  offer  at  their  peril  in  respect  of  costs. 


262.  Green  v.  Shepherd. 

July  4,  1866.      Ct.  of  Session.  —  Ct.  of  Sess.  Cos.  3d  Ser.  IV.  1028  ;  2 
Scot.  L.  Rep.  168. 

THE  plaintiff  being  an  English  chemist  and  manufacturer 
of  washing  powder,  the  defendant,  a  Scotch  manufacturer  of 
the  same  article,  sold  his  goods  under  the  plaintiff's  trade- 
mark. 

Action  for  damages  and  an  interdict.  Motion  by  the  plain- 
tiff for  an  interim  interdict  refused,  on  the  ground  that  the 
summons  was  framed  on  the  footing  that  the  plaintiff  had  no 
case  for  an  interim  interdict,  but  undertook  to  prove  his  right 
by  recovering  damages,  as  a  preliminary  to  obtaining  an  in- 
terdict. 

263.  Sherwood  v.  Andrews. 

August,  1866.     Chicago  Super.  Ct.  —  5  Am.  L.  Reg.N.  S.  588. 
THE  plaintiffs  being  manufacturers  of  "  Holbrook's  School 
Apparatus  "  (that  apparatus  having  been  first  manufactured 

149 


MAXWELL  V.  HOGG. 

by  J.  Holbrook,  afterwards  by  his  son,  D.  Holbrook,  and 
next  by  a  company  organized  by  D.  Holbrook,  and  called 
"  The  Holbrook  School  Apparatus  Company"  which  company 
had  recently  been  dissolved  by  the  plaintiffs,  the  sole  stock- 
holders therein),  the  defendants  began  to  sell  another  appa- 
ratus under  the  same  name. 

Injunction  to  restrain  the  defendants  from  using  the  name 
"  Holbrook  "  or  "Holbrookes  "  on  such  apparatus  refused ;  and 

Held,  (1.)  that  the  name,  having  been  used  by  several  per- 
sons other  than  the  plaintiffs  or  their  predecessors,  had  be- 
come generic  and  descriptive  and  incapable  of  protection  as  a 
trade-mark ;  (2.)  that  even  if  the  company  had  had  a  valid 
right  in  the  mark,  it  did  not  pass  to  the  plaintiffs  as  being  the 
stockholders  at  the  time  of  the  dissolution ;  (3.)  that  a  trade- 
mark should  not  be  protected  in  the  hands  of  an  executor,  as- 
signee, or  other  person  claiming  through  its  first  adopter,  un- 
less such  person  added  to  it  words  indicative  of  the  relation 
between  himself  and  the  first  adopter  of  the  mark,  since  other- 
wise a  fraud  would  be  committed  on  the  public.1 


264.  Maxwell  v.  Hogg. 

November  8,  1866;  January  15,  1867.  Stuart  C.  V.—  12  Jur.  N.  S.  310; 
15  L.  T.  N.  S.  204;  15  W.  R.  84.  Turner  and  Cairns,  L.  JJ.  —L.  R. 
2  Ch.  307;  36  L.  J.  Ch.  433;  16  L.  T.  N.  S.  130;  15  W.  R.  467. 

THE  defendants  having,  in  1863,  registered,  under  the 
Copyright  Acts,  the  name  "  Belgravia"  as  the  title  of  a  new 
magazine,  but  not  having  published  the  magazine,  the  plain- 
tiff registered  the  same  name  in  1866,  and  went  to  consider- 
able expense  in  respect  of  his  intended  publication.  The 
defendants,  having  discovered  this  in  August,  hastened  on 
their  own  publication,  and  announced  it  on  September  24, 
and  published  it  on  the  25th.  The  plaintiff's  magazine  was 
brought  out  in  October. 

Injunction  to  restrain  the  defendants  from  using  the  name 
refused,  on  the  ground  that  the  name  had  been  first  used  on 
1  See  Singer  Man.  Co.  v.  Wilson,  477. 

150 


HOGG  V.  MAXWELL. 

an  actual  publication  by  the  defendants,  and  that  the  expense 
which  the  plaintiff  had  been  at  in  the  preparation  of  the  work, 
advertisements,  etc.,  could  not  give  him  an  exclusive  right  in 
the  name. 

Per  Turner,  L.  J.  "  It  seems  to  me  that  there  is  a  great  distinc- 
tion between  the  case  of  advertisement  followed  by  publication  and  a 
case  resting  upon  advertisement  only.  In  the  case  of  advertisement 
followed  by  publication,  the  party  publishing  has  given  something  to 
the  world,  and  there  is  some  consideration  for  the  world's  giving  him 
a  right ;  but  in  the  case  of  mere  advertisement  he  has  neither  given, 
nor  come  under  any  obligation  to  give,  anything  to  the  world,  so  that 
there  is  a  total  want  of  consideration  for  the  right  which  he  claims." 

Per  Cairns,  L.  J.  (p.  310).  "  It  always  appeared  to  me  that  Clark 
v.  Freeman  might  have  been  decided  in  favor  of  the  plaintiff,  on  the 
ground  that  he  had  a  property  in  his  own  name." 

P.  314.  "All  the  definitions  which  have  been  given  in  this  court 
of  the  nature  of  the  right  to  protection  in  the  case  of  trade-marks 
seem  to  me  to  be  opposed  to  the  idea  that  protection  can  be  given 
where  there  has  been  no  sale,  or  offering  for  sale,  of  the  articles  to 
which  the  name  is  to  be  attached." 

P.  315.  "I  am  prepared  to  hold,  without  any  hesitation,  that  the 
mere  intention,  and  the  declaration  of  intention,  to  use  a  name  will 
not  create  any  property  in  that  name ;  and  to  hold  also  that  there  can 
be  no  protection  in  this  court  for  the  intended  name  during  the  course 
of  manufacture  of  the  article  which  is  to  bear  that  name."  * 


265.  Hogg  v.  Maxwell. 

November  8,  1866;  January  15,  1867.  Stuart,  V.  C.  —  12  Jur.  N.  S.  916; 
15  L.  T.  N.  S.  204 ;  15  W.  R.  84.  Turner  and  Cairns,  L.  JJ.  —L.  R. 
2  Ch.  316;  36  L.  J.  Ch.  437;  16  L.  T.  N.  S.  133;  15  W.  R.  470. 

CEOSS  suit  by  the  defendants  in  Maxwell  v.  Hogg. 

Injunction  to  restrain  the  plaintiff  in  that  suit  from  using 
the  name  "  Belgravia  "  as  the  title  of  a  magazine  refused,  on 
the  ground  that  the  prior  registration  of  the  name  under  the 
Copyright  Acts  by  the  plaintiffs  in  the  cross  suit,  without 
actual  publication,  gave  them  no  exclusive  right  in  the  name  ; 
1  See  Hogg  T.  Kirby,  10. 

151 


MORGAN  V.  McADAM. 

and,  further,  that  they  could  not  be  protected  in  the  assertion 
of  such  a  right  in  respect  of  their  short  actual  prior  user,  by 
reason  of  their  uncandid  conduct  in  receiving  and  inserting  in 
other  publications  of  theirs  advertisements  of  the  forthcoming 
rival  magazine  under  the  title  in  dispute,  at  the  very  time 
when  they  were  hastening  on  their  own  publication. 
No  costs  given  on  either  side  in  either  suit.1 


266.  Deiz  v.  Lamb. 

November,  1866.     N.  Y.  Super.  Ct. :  Monell,  J.  —  29  N.  Y.  Super.  Ct. 
(6  Robertson)  537. 

THE  plaintiff  having  purchased  the  "  Prescott  House  "  Ho- 
tel, the  defendant,  a  coach  proprietor,  who  had  had  a  revoca- 
ble license  from  the  former  proprietor  of  the  hotel  to  place 
the  name  "Prescott  House  "  upon  his  coaches,  continued  so  to 
use  the  name  of  the  hotel. 

On  motion  by  the  plaintiff  injunction  granted  to  restrain 
the  defendant  from  so  doing,  on  the  ground  that  the  license 
had  determined  upon  the  sale  of  the  hotel  to  the  plaintiff.2 


267.  Morgan  v.  McAdam. . 
December  5,  1866.    Wood,  V.  C.  —  36  L.  J.  Ch.  228;  15  L.  T.  N.  S.  348. 

THE  plaintiffs  being  manufacturers  of  crucibles,  who  traded 
under  the  name  of  "  The  Patent  Plumbago  Crucible  Co." 
and  sold  their  crucibles  as  "Patent  Plumbago  Crucibles"  the 
defendants  began  to  trade  under  the  same  name,  and  to  sell 
their  crucibles  under  the  same  name. 

Injunction  to  restrain  the  defendants  from  so  doing  refused, 
on  the  ground  that  the  plaintiffs'  crucibles  were  not  and  never 
had  been  the  subject  of  a  patent,  though  the  plaintiffs  stated 
that  they  had  been  informed  by  one  of  the  persons  from  whom 
they  had  bought  the  secret  of  the  construction  of  the  cruci- 
bles that  there  was  an  American  patent ;  and 

Held,  that,  since  the  objection  to  the  plaintiffs'  title  had 

1  See  preceding  case.  2  See  Howard  v.  Henriques,  108. 

152 


SCOTT  v.  SCOTT. 

already  been  brought  to  their  notice  by  the  dismissal  on  that 
ground  of  a  summons  brought  by  them  before  a  magistrate, 
under  the  Merchandise  Marks  Act,  1862,  the  bill  must  be 
dismissed  with  costs. 

Held,  further,  that  where  an  article  had,  during  the  exist- 
ence of  a  patent,  been  sent  into  the  market  as  "  patent  pins," 
"  patent  wire,"  etc.,  on  the  expiration  of  the  patent  the 
marked  articles  might  still  be  sold,  though  it  would  be  better 
to  place  on  them  the  date  of  the  patent. 

"  All  that  this  court  has  to  determine  is,  has  the  plaintiff,  who 
comes  here  to  seek  relief,  any  ground  whatever  for  asking  the  court 
to  assist  him  in  the  protection  of  that  right  which  he  sets  up  ?  If 
the  court  finds  it  to  be  a  right  founded  upon  fraud,  and  certainly,  in 
effect,  this  is  such,  the  court  says  it  cannot  assist  a  person  in  carrying 
on  a  fraud."  x 


268.   Scott  v.   Scott. 
December  13,  1866.     Wood,  V.  C.  — 16  L.  T.  N.  S.  143. 

ON  the  dissolution  of  the  partnership  of  "  Robert  $•  Walter 
Scott"  the  interest  of  the  plaintiff,  W.  Scott,  in  the  partner- 
ship premises  was  purchased  by  his  partner,  R.  Scott,  and  it 
was  agreed  that  each  should  be  at  liberty  to  carry  on  the 
business,  but  that  the  old  name  should  not  be  used  by  either, 
except  for  winding  up  the  affairs  of  the  partnership.  The 
defendants,  having  been  placed  in  possession  of  the  old  prem- 
ises by  R.  Scott,  began  to  style  themselves  on  a  door-plate 
"  Scott  £  Nixon,  late  Robert  £  Walter  Scott" 

On  motion  by  the  plaintiff  injunction  granted  to  restrain 
the  defendants  from  using  a  door-plate  with  an  inscription  rep- 
resenting that  they  were  carrying  on  business  in  continuation 
of  or  in  succession  to  the  old  firm,  on  the  ground  that  the 
effect  of  the  new  plate  was  to  represent  the  plaintiff  as  hav- 
ing retired  from  business,  and  to  appropriate  his  interest  in 
the  good-will  of  the  old  firm. 

1  See  Pidding  v.  How,  60. 

153 


MATSELL  V.  FLANAGAN. 

269.  Gillott  v.  Esterbrook. 

January,  1867;  January,  1872.  N.  Y.  Sup.  Ct.  —  ±7  Barb.  455;  R.  Cox, 
340.  N.  Y.  Comm.  of  App.  —  iS  N.  Y.  (3  Sickles)  374;  8  Amer.  Rep. 
553. 

THE  plaintiff  being  a  penmaker  who  stamped  his  pens 
"  Joseph  G-illott,  Extra  Fine,  303,"  and  sold  them  in  boxes 
labelled  with  the  same  name  and  figures,  the  defendants  be- 
gan to  sell  other  pens  similarly  stamped,  in  boxes  similarly  la- 
belled, except  that  they  put  their  name,  "  JSsterbrook  £  (70., " 
in  place  of  "  Joseph  Grillott" 

Injunction  granted  to  restrain  the  defendants  from  using 
the  figures  "  303,"  with  damages  and  costs. 

Per  Potter,  J.  "  The  principle,  in  short,  is,  that  no  man  has  a 
right  to  sell  his  own  goods  as  the  goods  of  another,  and  the  courts 
will  lend  their  aid  to  prevent  the  imposition  ;  but  there  is  a  limitation 
to  this  right.  The  trade-mark  which  is  entitled  to  protection  must  be 
such  as  will  identify  the  article  to  which  it  is  affixed  as  that  of  the 
person  adopting  it,  and  distinguish  it  from  others." 

P.  348.  "  A  word  that  is  well  known  in  the  language  and  which 
is  the  name  of  an  article,  or  words  that  merely  indicate  the  quality  of 
an  article,  cannot,  it  seems,  be  so  exclusively  appropriated  as  a  trade- 
mark. Nor  can  the  appropriated  name  of  a  manufactured  article,  if 
the  article  is  a  known  substance  or  production,  be  exclusively  used  as 
a  trade-mark,  except  by  those  who  have  an  exclusive  property  in 
the  article  itself,  though  a  mere  name  may  be  protected  as  a  trade- 
mark where  it  is  used  merely  to  indicate  the  true  origin  or  owner- 
ship of  the  article  offered  for  sale,  or  when  a  new  preparation  or 
compound  is  made,  and  a  distinctive  and  specific  name  is  necessarily 
given  to  it,  which  has  not  before  by  adoption  and  use  become 
known."  * 


270.  Matsell  v.  Flanagan. 

January,  1867.     N.  Y.C.P.:    Brady,  J.  — 2  Abb.  Pr.  N.-S.  459;    R. 

Cox,  367. 

THE  plaintiffs  being  the  proprietors  and  publishers  of  The 
National  Police  Gazette,  commonly  known  as  The  Police  Cra- 
1  See  Lawrence  Man.  Co.  v.  Lowell  Hosiery  Mills,  676. 

154 


GRAVELEY  V.  WINCHESTER. 

zette,  the  defendants  began  to  publish  another  paper  under 
the  name  of  The  United  States  Police  Gazette. 

Motion  by  the  defendants  to  dissolve  an  injunction  which 
had  been  granted  on  motion  by  the  plaintiffs,  to  restrain  them 
from  publishing  a  paper  under  that  name,  refused,  there  being 
evidence  of  actual  deception. 

"  The  enforcement  of  the  doctrine  that  trade-marks  shall  not  be 
simulated  does  not  depend  entirely  upon  the  alleged  invasion  of  indi- 
vidual rights,  but  as  well  upon  the  broad  principle  that  the  public  are 
entitled  to  protection  from  the  use  of  previously  appropriated  names 
or  symbols,  in  such  a  manner  as  may  deceive  them,  by  inducing  or 
leading  to  the  purchase  of  one  thing  for  another."  l 

271.   Dixon  v.  Jackson. 

January  29,  1867.     Ct.  of  Session.  —  Ct.  of  Sess.  Cos.  3d  Ser.  V.  326;   2 
Scot.  L.  Rep.  188. 

THE  plaintiffs  being  iron-masters  at  Govan,  who  were  in 
the  habit  of  marking  their  bar  iron  "  Grovan*  "  from  which 
they  alleged  that  it  had  acquired  the  name  of  "  star  iron;  " 
the  defendant,  who  was  an  iron-master  at  Coats,  and  had  been 
in  the  habit  of  marking  his  bar  iron  with  the  word  "  Coats  " 
simply,  began  to  mark  it  "  Coats.*  " 

Interim  interdict  granted  to  restrain  the  defendant  from  so 
doing. 

272.  Graveley  v.  Winchester. 
March  14,  1867.     Wood,  V.  C.  —  Seton,  4th  ed.  257. 

THE  plaintiffs  being  a  firm  of  engineers,  who  had  purchased 
the  business  of  Winchester  &  Co.,  the  defendant  began  to 
carry  on  business  under  the  name  of  "  Winchester  £  Co." 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendant  from  so  doing,  and  from  representing  that  he 
was  carrying  on  business  in  succession  to  that  carried  on  by 
that  firm,  with  directions  for  the  delivery  up  of  trade-cards  or 
circulars,  and  an  inquiry  as  to  damages. 
*  See  Hogg  v.  Kirby,  10. 

155 


FARINA  V.  CATHERY. 

273.  Stephens  v.  Peel. 
March  21,  1867.     Wood,  V.  C.  —  16  L.  T.  N.  S.  145. 

THE  plaintiffs  being  ink-makers,  who  sold  their  ink  in  bot- 
tles bearing  labels  consisting  in  part  of  white  letters  on  a  red 
ground,  in  part  of  white  letters  on  a  blue  ground,  and  in  part 
of  blue  letters  on  a  white  ground,  with  a  white  crown,  and 
the  words  "  Stephens'  Blue  Black  Writing  Fluid  "  in  white, 
the  defendant  began  to  sell  other  ink  in  bottles  similarly 
labelled,  but  having  the  word  "  Steelpens  "  substituted  for 
"  Stephens':' 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendant  from  using  labels  calculated  to  deceive. 


274.  Blackwell  v.  Crabb. 
April  25,  1867.     Wood,  V.  C.  —  36  L.  J.  Ch.  504. 

THE  plaintiffs  being  manufacturers  of  pickles,  which  they 
sold  in  bottles  bearing  a  label  composed  of  a  number  of  de- 
tails, the  defendant  began  to  sell  other  pickles  in  similar  bot- 
tles labelled  very  similarly. 

Motion  by  the  plaintiffs  for  an  injunction  to  restrain  the  de- 
fendant from  selling  pickles  in  bottles  so  labelled  refused,  on 
the  ground  that,  though  there  was  a  considerable  general  re- 
semblance between  the  two,  the  name,  to  which  a  customer 
would  look  to  discover  the  identity,  was  conspicuously  differ- 
ent, and  there  were  other  points  of  difference,  besides  that  the 
elements  combined  in  the  labels  were,  for  the  most  part,  of 
common  right. 


275.  Farina  v.  Cathery. 
April  26,  1867.     Wood,  V.  C.  —  L.  J.  Notes  of  Cases,  1867,  p.  134. 

THE  plaintiff  being  a  German  manufacturer  of  Eau  de  Co- 
logne, which  he  sold  in  bottles  bearing  a  special  label,  the 
defendants,  as  agents  for  another  German  manufacturer,  sold 
other  Eau  de  Cologne  in  bottles  labelled  in  exact  imitation  of 

156 


BURNETT  v.  PHALON. 

the  plaintiffs,  except  that  the  word  "  Josephs  "  was  substituted 
for  the  word  "  Julichs." 

Injunction  granted  to  restrain  the  defendants  from  so  doing  ; 
and  Held,  that  a  defence  that  the  defendants'  labels  had  been 
exhibited  in  the  United  Kingdom  many  years  previously,  and 
that  their  use  was  not  prohibited  by  Prussian  law,  failed,  on 
the  ground  that  progressive  alterations  had  been  made  in  the 
labels,  producing  greater  and  greater  similarity  to  the  plain- 
tiff's, and  varying  the  device  to  which  a  right  was  alleged  to 
have  been  acquired  in  Germany. 


276.  Smith  v.  Woodruff. 
April,  1867.     N.  Y.  Sup.  C*.  — 48  Barb.  438;  R.  Cox,  373. 

THE  plaintiffs  being  compounders  of  a  perfume,  which  they 
sold  under  the  name  of  "  Sweet  Opoponax  of  Mexico"  the 
defendant  began  to  sell  another  perfume  under  the  same 
name. 

Injunction  granted  to  restrain  the  defendant  from  so  doing ; 
and  Held,  (1.)  that  that  name  had  become  indicative  of  the 
plaintiffs'  article,  though  it  had  been  used  by  others  before 
them ;  (2.)  that  evidence  produced  by  the  defendant  to  show 
the  absence  of  opoponax  from  the  plaintiffs'  composition  be- 
ing contradicted,  and  that  fact,  even  if  established,  not  prov- 
ing any  flagrant  imposition  on  the  part  of  the  plaintiffs,  a 
defence  based  on  the  plaintiffs'  own  alleged  misstatements 
failed.1 

277.  Burnett  v.  Phalon. 

June,  1867.  N.  Y.  Super.  Ct.  —  22  Monthly  L.  R.  (12  N.  5.)  220;  9  Bos. 
193;  R.  Cox,  376.  N.  Y.  Ct.  of  App.  —  3  Keyes,  594  ;  3  Trans.  App. 
167 ;  5  Abb.  Pr.  N.  S.  212 ;  R.  Cox,  397. 

THE  plaintiffs  being  manufacturers  of  a  hair-oil  which  they 
sold  under  the  name  of  "  Cocoaine"  the  defendants  began  to 
sell  an  oil  of  their  own  under  the  name  of  "  Cocaine." 
1  See  Pidding  v.  How,  60 

157 


FABER  V.  FABEB. 

Injunction  granted  to  restrain  the  defendants  from  selling 
their  oil  under  that  name,  or  any  other  name  imitated  from 
the  name  applied  by  the  plaintiffs  to  •  their  oil,  that  name 
being  held  to  be  a  valid  trade- mark  and  the  property  of  the 
plaintiff. 

Per  Pierrepont,  J.  "  Every  man  has  a  right  to  the  reward  of  his 
skill,  his  energy,  and  his  honest  enterprise ;  and  when  he  has  appro- 
priated, as  his  trade-mark,  letters  combined  into  a  word  before  un- 
known, and  has  used  that  word,  and  has  long  published  it  to  the 
world  as  his  adopted  trade-mark,  he  has  acquired  rights  in  it  which 

the  courts  will  protect."  * 

» 

278.  Faber  v.  Faber. 

June,  1867.     N.  Y.  Sup.  Ct. :  Sutherland,  J.  —  49  Barb.  357  ;  3  Abb.  Pr. 
N.  S.  115;  R.  Cox,  401. 

THE  plaintiff  being  a  maker  of  lead  pencils,  which  he 
stamped  "  A.  W.  Faber,"  the  defendant,  John  H.  Faber,  sold 
other  pencils  stamped  with  his  name. 

Motion  to  continue  an  injunction  which  had  been  granted 
to  restrain*  the  defendant  from  so  doing  refused,  on  the 

1  This  is  a  leading  case,  as  illustrating  generally  accepted  in  the  United  States. 

the  doctrine  that  a  coined  word  may  be  The  coined  words,  "  BOVILINE,"  "  SA- 

protected  against  other  words  which  are  POLIO,"  "CARBOLINE,"  "  VASELINE," 

idem  sonans.    The  defendants' label  was  etc.,   may   be   mentioned    as    illustra- 

quite  unlike  plaintiffs',  and  the  chance  tions. 

of  deception  was  limited,  it  may  be  as-  Another  point  which  was  indirectly 
sumed,  to  persons  who  purchased  rely-  decided  in  sustaining  the  word  "  Coco- 
ing  upon  the  name.  There  are  nu-  aine  "  is,  that  words  which  point  to, 
merous  cases  to  the  same  effect,  and  without  describing,  the  ingredients  of 
none  which  are  to  be  regarded  as  con-  an  article,  may  be  valid  trade-marks  in 
troverting  it.  The  rule  is  lucidly  stated  the  United  States.  The  plaintiffs' ar- 
in  Carroll  v.  Ertheiler,  672,  which  see.  ticle  was  a  preparation  of  cocoa-nut  oil, 

The  decision  in  Burnett  v.  Phalon  is  and  the  word  "Cocoaine"  was  broadly 

also  of  pronounced  interest  and  value,  suggestive  of  the  fact.     This  circum- 

as  emphasizing  the  principle,  that  al-  stance  was   not  lost  sight  of   by  the 

though  an   article  may  have  no  other  court,    but   was   treated    as   of    little 

name  than  that  which  is  claimed  as  a  weight.      The  rule  in   England,  how. 

trade-mark,  the  name  may  be  mouopo-  ever,   is   different.      Thus,    the   words 

lized.   There  are  considerations  of  great  "LINOLEUM"  (536),   "  VALVOLINE  " 

weight  that  tend  to  negative  the  cor-  (597),  etc.,  have  been  held  to  be  publici 

rectness  of  this  conclusion,  but  those  juris,  by  reason  of  their  being  descrip- 

which  make  in  favor  of  it  have  been  tive. 

158 


FULTON  V.  SELLERS. 

ground  that  the  defendant  \vas  entitled  to  use  his  own  name 
without  fraud.1 


279.  Fulton  v.  Sellers. 
1867.     Perm.  Sup.  Ct.  — 4  Brews.  42. 

THE  plaintiffs  (respondents)  being  the  proprietors,  by  as- 
signment, of  a  medical  preparation  which  they  sold  under  the 
name  of  the  original  inventor,  as  "  Dr.  J.  M.  Lindsey^s  Im- 
proved Blood  Searcher"  the  defendants  (appellants)  began  to 
sell  another  compound  under  similar  name. 

Suit  for  an  injunction  to  restrain  the  defendants  from  in- 
fringing the  plaintiffs'  rights. 

Held,  (1.)  that  the  words  in  question  constituted  a  legiti- 
mate trade-mark:  (2.)  that  such  trade-mark  passed  to  the 
plaintiffs,  under  their  agreement  with  the  original  inventor  for 
the  purchase  of  all  his  right,  title,  and  interest  in  the  article 
known  by  the  name  in  question,  and  of  a  right  to  take  his 
name  and  all  his  interest,  so  far  as  was  necessary  ;  (3.)  that 
the  plaintiffs  were  not  disentitled  by  reason  of  their  using  the 
name  without  words  to  mark  their  derivative  title ;  (4.)  and 
that  the  injunction  must  be  granted. 

"  A  manufacturer  or  vendor  cannot  adopt  words  in  common  use 
descriptive  of  similar  articles,  and  call  upon  a  court  to  prevent  other 
parties  from  using  them.  Such  words  cannot  be  made  trade-marks, 
nor  can  words  which  simply  define  the  nature,  kind,  or  quality  of 
articles  sold.  If  a  trade-mark  consists  of  words,  as  it  may,  they  must 
be  specific  and  distinctive  in  their  meaning.  They  must  point  to  the 
articles  and  to  nothing  else.  It  is  undoubtedly  true  that  the  name 
of  an  inventor  or  discoverer  or  manufacturer  may  be  employed  as  a 
part  of  a  trade-mark.  It  may  give  to  other  parts  of  the  appellation 
a  distinctive  character,  or,  rather,  it  may  make  words  distinctive  that 
without  the  name  would  not  b,e.  Such  trade-marks  are  recognized  as 
legitimate." 

"  The  right  to  use  his  (the  vendor's)  name  and  all  his  interest  must 
include  the  right  to  the  use  of  the  trade-mark.     That  was  an  interest 
of  the  vendor  ;  he  had  a  property  in  the  trade-mark." 
i  See  Burgess  v.  Burgess,  117. 

159 


DAVIS  V.  KENNEDY. 

"  We  do  not  think  the  position  tenable  that  the  complainants  are 
not  entitled  to  relief  because  they  are  only  assignees  of  the  trade- 
mark, and  use  it  without  designating  themselves  assignees.  We  do 
not  perceive  how  their  using  the  mark  after  they  bought  it,  without 
giving  notice  that  they  are  not  the  original  owners  of  it,  can  be  fraud 
upon  the  public,  of  which  the  defendant  can  avail  himself.  A  trade- 
mark, like  the  good-will  of  a  shop  or  manufacturing  establishment,  is 
a  subject  of  commerce,  and  it  has  many  times  been  held  entitled  to 
protection  at  a  suit  of  the  vendees." 


280.  Field  v.  Lewis. 
August  3,  1867.      Wood,  V.  C.  —  Seton,  4th  ed.  237. 

THE  plaintiffs  having  long  manufactured  and  sold  soap 
under  the  name  of  "  United  Service  "  soap,  the  defendant  be- 
gan to  sell  other  soap  under  the  same  name. 

Injunction  granted  to  restrain  the  defendant  from  using  the 
name  in  question,  with  costs,  notwithstanding  that  the  de- 
fendant had  placed  his  own  name  on  his  own  label,  and  that 
there  was  no  evidence  of  actual  deception,  and  that  the  bill 
had  been  filed  without  any  previous  intimation  being  given  to 
the  defendant. 


281.  Davis  v.  Kennedy. 

September  3,  1867.     Canada  West  Chanc.:  Mowat,  V.  C. —  Codd.  Dig. 

236. 

THE  plaintiff  being  the  inventor  and  manufacturer  of  a 
medical  preparation,  which  he  called  and  labelled  "Perry 
Davis'  Vegetable  Pain  Killer"  the  defendant  began  to  manu- 
facture and  sell  a  similar  article,  under  the  name  of  "  The 
Great  Home  Remedy,  Kennedy's  Pain  Killer"  but  with  quite 
different  labels. 

Injunction  granted  to  restrain  the  defendant  from  using  the 
words  "  Pain  Killer  "  in  connection  with  his  preparation,  that 
term  being  held  to  be  a  fancy  name  indicative  of  the  plaintiff's 

article.1 

1  See  Davis  v.  Kendatt,  103. 

160 


NEWMAN  V.  ALVORD. 

282.  Newman  v.  Alvord. 

September,  1867;  September,  1872.  N.  Y.  Sup.  Ct.  —  49  Barb.  588;  35 
How.  Pr.  108;  R.  Cox,  404.  N.  Y.  Comm.  of  App.  —  5l  N.  Y.  (6 
Sickels)  189;  10  Amer.  Rep.  588. 

THE  plaintiffs  manufacturing  cement  at  Akron,  in  Erie 
County,  New  York,  which  they  sold  in  packages  labelled 
"  Newman's  Akron  Cement  Co.,  manufactured  at  Akron,  N. 
Y.  The  Hydraulic  Cement,  known  as  the  Akron  Water  Lime," 
the  defendants,  who  manufactured  cement  at  Syracuse,  in 
Onondaga  County,  New  York,  began  to  sell  it  in  packages 
labelled  "  Alvord' 8  Onondaga  Akron  Cement,  or  Water  Lime, 
manufactured  at  Syracuse,  New  York" 

Injunction  granted  to  restrain  the  defendants  from  using 
the  word  "  Akron  "  in  connection  with  their  cement,  although, 
if  the  defendants  had  manufactured  at  Akron,  the  decision 
might  have  been  different. 

Per  Daniels,  J.  (R.  Cox,  413).  "  Where  words  or  names  are  in 
common  use,  the  law  does  not  permit  an  appropriation  of  them  as 
trade-marks  to  be  made,  so  far  as  they  are  comprehended  by  such 
use.  And  for  that  reason  words  and  names  having  a  known  or  es- 
tablished signification  cannot,  within  the  limits  of  such  specification, 
be  exclusively  appropriated  to  the  advancement  of  the  business  pur- 
poses of  any  particular  individual,  firm,  or  company.  The  inability 
to  make  such  appropriation  of  them  arises  out  of  the  circumstance 
that,  on  account  of  their  general  or  popular  use,  every  individual  in 
the  community  has  an  equal  right  to  use  them,  and  that  right  is  in  all 
cases  paramount  to  the  rights  and  interests  of  any  one  person,  firm,  or 
company.  What  alike  may  be  claimed  and  used  by  all  cannot  be  ex- 
clusively appropriated  to  advance  the  interests  of  any  person 

But  while  this  limitation  is  entirely  reasonable,  there  can  be  no  pro- 
priety in  extending  it  beyond  the  circumstance  upon  which  it  is 
founded ;  and  accordingly  any  member  of  the  community  whose  in- 
terests and  business  may  be  promoted  by  doing  so  should  be  at 
liberty  to  apply  even  names  and  words  in  common  use  to  the  prod- 
ucts of  his  industry,  in  such  a  manner  as  to  indicate  their  origin  or 
particular  manufacture,  where  such  application  will  not  intrench  upon 
and  be  in  no  way  included  in  their  use  by  the  public.  By  doing  so, 
11  161 


ROGERS  V.  TAINTOR. 

the  rights  of  no  member  of  the  community  can  be  in  any  manner  in- 
fringed, and  no  public  inconvenience  whatever  can  be  occasioned  by 
it.  The  public  will  still  be  left  at  full  liberty  to  use  such  words  or 
terms  as  they  were  used  before ;  while  for  a  special  purpose  a  new 
office  or  purpose  may  be  imposed  upon  them." 


283.  Rogers  v.  Taintor. 

October,  1867.     Mass.  Sup.  Ct.  —  97  Mass.  (I  Browne)  291. 

FAY,  Joslin,  Rogers,  and  Taintor  manufactured  machinery 
in  partnership  at  Worcester  (Mass.),  under  the  name  of  "Fay 
$•  Co."  Fay,  Joslin,  Rogers,  and  Cheney  did  the  same  at 
Cincinnati,  under  the  same  name.  After  Fay's  death  the  two 
businesses  continued  to  be  carried  on  as  before  by  the  respec- 
tive surviving  partners,  until  the  dissolution  of  the  Worcester 
firm,  when  the  defendant  Taintor,  one  of  the  partners  in  that 
firm,  bought  the  business  and  good-will,  and  continued  to  carry 
on  business  in  the  same  name,  but  as  a  vendor  of  machines 
not  manufactured  by  him. 

Suit  by  the  Cincinnati  firm  for  an  injunction  to  restrain  him 
from  using  the  name  in  his  business  or  on  machines  not  made 
by  the  plaintiffs. 

Injunction  to  restrain  him  from  so  doing  refused,  on  the 
ground  that,  (1.)  the  name  in  question  was  not  that  of  any  of 
the  plaintiffs  ;  (2.)  the  representative  of  Fay  was  not  a  party 
to  the  suit  (this  refers  to  the  Mass.  Gen.  St.  c.  56)  ;  (3.)  the 
defendant  was  carrying  on  business  in  continuation  of  the 
Worcester  firm,  and  did  not  assume  any  connection  with  the 
plaintiffs  ;  (4.)  the  defendant,  if  he  had  a  right  to  use  the 
name  at  all,  had  a  right  to  use  it  as  he  pleased,  on  goods  of 
his  own  make,  or  otherwise ;  (5.)  the  plaintiffs  could  not 
have  acquired,  by  the  dissolution  of  the  Worcester  firm,  which 
was  quite  distinct  from  theirs,  any  special  rights  in  the  name 
beyond  such  as  they  had  already. 

162 


R.  v.  SUTER  AND  COULSON. 

284.  Howe  v.  The  Howe  Machine  Company. 
November,  1867.     N.  Y.  Sup.  Ct.  —  50  Barb.  236  ;  R.  Cox,  421. 

THE  plaintiff,  A.  B.  Howe,  being  a  manufacturer  of  sewing- 
machines,  which  he  made  under  a  license  from  his  brother, 
Elias  Howe,  the  patentee,  and  stamped  with  the  name  "Howe," 
the  defendant  company,  claiming  under  Elias  Howe,  began  to 
manufacture  other  machines,  and  to  stamp  them  in  the  same 
way. 

On  appeal  from  an  order  dissolving  an  injunction  which  had 
been  granted  to  restrain  the  defendants  from  so  doing : 

Held,  (1.)  that  the  plaintiff  was  entitled  to  appropriate  the 
name  as  his  trade-mark  on  sewing-machines,  to  the  exclusion 
of  his  brother,  Elias  Howe,  the  original  inventor  and  patentee 
of  the  particular  machine,  which  the  plaintiff  only  made  by 
his  license,  and  also  of  the  defendant  company  ;  but  (2.)  that, 
there  being  a  question  whether  Elias  Howe  was  not  entitled 
to  use  the  trade-mark  under  an  agreement  between  him  and 
the  plaintiff,  no  injunction  could  be  granted  before  the  trial. 


285.   R.  v.  Suter  and  Coulson. 

November  16,  1867.     C.  C.  R.  —  10  Cox,  577;  17  L.  T.  N.  S.  177;  16 

W.  R.  141. 

ON  an  indictment  for  obtaining  money  on  false  pretences  : 
Held,  that  the  prisoners,  who  had  obtained  money  by  falsely 
representing  a  spurious  stamp  on  a  watch   to  be  a  genuine 
hall-mark  of   the   Goldsmiths'  Company,  and   to  prove  the 
watch  to  be  of  18-carat  gold,  were  rightly  convicted. 

Per  Kelly,  C.  B.  "  There  is  no  difference  in  principle  between  a 
misrepresentation  of  a  mark,  and  one  that  an  acceptance  was  the 
acceptance  of  John  Jones,  or  any  other  person." 

163 


LAMPLOUGH  v.  BALMEB. 

286.   The  Liebig's  Extract  of  Meat  Company  (Limited) 
v.  Hanbury. 

November  19,  1867.     Wood,  V.  C.  —  17L.  T.  N.  S.  298. 

THE  plaintiffs  being  manufacturers  and  vendors  of  "Lie- 
big's  Extract  of  Meat"  the  defendants  began  to  prepare  meat 
in  accordance  with  Liebig's  recipe,  and  to  sell  it  under  the 
same  name. 

Injunction  to  restrain  the  defendants  from  using  the  name 
refused,  on  the  ground  that  the  name  had  for  some  time  past 
been  in  common  use  as  descriptive  of  an  article  prepared  in  a 
particular  manner,  and  that  it  would  be  injurious  to  the  de- 
fendants to  require  them  to  change  the  name  of  their  article.1 


287.   R.  v.  Hunter. 
R.  v.  Carter. 

November  23,  1867.     C.  C.R.—  10  Cox,  642;  17  L.   T.  N.  S.  321;  16 

W.  R.  342. 

ON  indictments  for  obtaining  money  under  false  pretences  : 
Held,  that  the  prisoners,  who  were  coal-hewers,  and  had 
obtained  payment  for  more  work  than  they  had  done,  by  re- 
moving the  tokens  or  tickets  of  others  from  the  tubs  of  coal 
and  substituting  their  own,  were  rightly  convicted. 


288.  Lamplough  v.  Balmer. 
December  3,  1867.      Wood,  V.  C.—  W.  N.  1867,  p.  293. 

THE  plaintiff  selling  a  medical  compound  as  "  Pyretic  Sa- 
line" the  defendant  began  to  sell  another  article  under  the 
name  of  "  Balmer's  Pyretic  Salts" 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendant  from  so  doing  refused,  on  the  ground  that  the 
plaintiff's  labels  contained  the  words  "  Royal  Letters  Patent" 

1  This  case  was  decided   upon  the     descriptive  one,  in  the  connection  in 
assumption  that,  as  matter  of  fact,  the     which  it  was  used  by  the  plaintiffs. 
word  "  Liebig's  "  had  become  a  purely 

164 


CAS  WELL  v.  DAVIS. 

he  not  having  taken  out  any  patent,  and  notwithstanding  an 
explanation  by  the  plaintiff  that  he  had  used  the  term  in  con- 
sequence of  his  having  long  paid  duty  on  his  medicine  as  a 
patent  medicine.1 

289.  Caswell  v.  Davis. 

December,  1867;  September,  1874.  N.  Y.  C.  P.  —  4  Abb.  Pr.  N.  S.  6; 
35  How.  Pr.  76;  R.  Cox,  429.  N.  Y.  Ct.  of  App.  —  58  N.  Y.  (13 
Sickels)  223. 

THE  plaintiffs  being  the  compounders  of  a  medicine  which 
they  called  " Ferro-phosphorated  Elixir  of  Calisaya  Bark" 
the  defendant,  who  had  been  in  the  plaintiffs'  employ,  began 
to  sell  another  preparation  as  "  Davis  £  Sons'  original  and 
genuine  Ferro-phosphorated  Elixir  of  Calisaya  Bark" 

Suit  for  an  injunction  to  restrain  the  defendant  from  so 
doing. 

Held,  on  appeal,  that  an  injunction  could  not  be  granted  to 
restrain  the  defendant  from  using  the  word  "  Ferro-phospho- 
rated" the  word  being  descriptive  of  the  composition  of  the 
medicine. 

Per  Folger,  J.  (58  N.  Y.  233).  "  There  is  no  principle  more 
firmly  settled  in  the  law  of  trade-marks  than  that  words  or  phrases 
which  have  been  in  common  use  and  which  indicate  the  character, 
kind,  quality,  and  composition  of  the  thing  may  not  be  appropriated 
by  any  one  to  his  exclusive  use.  In  the  exclusive  use  of  them  the 
law  will  not  protect.  Nor  does  it  matter  that  the  form  of  words  or 
phrases  adopted  also  indicate  the  origin  and  maker  of  the  article. 
The  combination  of  words  must  express  only  the  latter.  It  is  the 
result  of  all  the  decisions  that  known  words  and  phrases  indicative  of 
quality  and  composition  are  the  common  property  of  all  mankind. 
They  may  not  be  appropriated  by  one  to  mark  an  article  of  his  manu- 
facture, when  they  may  be  used  truthfully  by  another  to  inform  the 
public  of  the  ingredients  which  make  up  an  article  made  by  him." 2 
1  See  Pidding  v.  How,  60.  2  See  Lee  v.  Haley,  325. 

165 


CURTIS  V.  BRYAN. 

29O.  Peabody  v.  Norfolk. 
January,  1868.     Mass.  Sup.  Ct. :  Gray,  J.  — 98  Mass.  (2  Browne)  452. 

THE  plaintiff  having  invented  a  secret  process  of  manufact- 
ure of  cloth,  and  the  defendant  Norfolk  having,  on  entering 
into  the  plaintiff's  service,  undertaken  not  to  give  information 
in  regard  to  the  process  to  any  one,  the  defendant  Norfolk 
left  the  plaintiff's  employ,  and  entered  into  an  arrangement 
with  other  persons,  by  which  they  were  to  build  another  fac- 
tory for  the  purpose  of  manufacturing  there  according  to  the 
plaintiff's  secret  process,  which  the  defendant  Norfolk  was  to 
communicate  to  them. 

Injunction  granted  to  restrain  the  defendant  Norfolk  from 
carrying  out  such  arrangement  and  making  such  communica- 
tion, and  also  to  restrain  the  defendant  Cook,  who  was  one  of 
the  persons  with  whom  the  arrangement  had  been  made,  and 
who  was  fully  aware  of  the  circumstances,  from  acting  in  exe- 
cution of  such  arrangement. 


291.  Curtis  v.  Bryan. 

January,  1868.     N.  Y.  C.P.—  2  Daly,  212  ;    36  How.  Pr.  33  ;    R.  Cox, 

434. 

THE  plaintiffs  being  the  makers  of  a  medicine  for  children, 
which  they  sold  under  the  name  of  "  Mrs.  Winslow's  Soothing 
Syrup"  and  in  bottles  stamped  and  labelled  in  English, 
French,  German,  and  Spanish,  the  defendant  began  to  sell 
another  medicine  under  the  same  name,  in  similar  bottles, 
similarly  labelled. 

Injunction  granted  to  restrain  the  defendant  from  infringing 
the  plaintiffs'  rights ;  .and 

Held,  (1.)  that  the  plaintiffs  were  not  disentitled  by  merely 
collateral  misrepresentations,  if  established  ;  (2.)  that  a  de- 
fendant who  had  imitated  the  plaintiffs'  article  could  not  be 
heard  to  say  that  it  was  injurious. 

Per  Van  Vorst,  J.     "  I  cannot  understand  how  the  right  of  a  plain- 

166 


BARNARD  v.  PILLOW. 

tiff  to  be  protected  in  a  trade-mark  adopted  by  him  is  to  be  affected 
by  advertisements  of  his  article  in  the  newspapers.  The  trade-mart; 
is  one  thing,  the  notices  or  commendations  of  his  medicines,  when  the 
inventor  offers  them  for  sale,  are  quite  another.  If  the  trade-mark 
contained  a  false  statement,  and  the  advertisement  of  the  plaintiff 
tended  to  establish  it,  they  might  be  used  for  that  purpose,  and,  except 
as  it  bore  on  that  question,  it  would  not  answer  to  determine  the  right 
of  a  plaintiff  to  protection  in  his  trade-mark  by  the  standard  of  credit 
allowed  to  an  advertisement  of  the  qualities  of  the  article."  1 


292.  Kelly  v.  Hutton. 

February  8,  July  30,  1868.  Stuart,  V.C.  —  37L.  J.  Ch.  297  ;  17  L.  T. 
N.  S.  591.  Wood  and  Selwyn,  L.  JJ.—L.  R.  3  Ch.  703;  37  L.  J.  Ch. 
917;  19  L.  T.N.  S.  228;  16  W.  R.  1182. 

SUIT  for  the  establishment  of  the  plaintiff's  claim  to  one 
moiety  of  the  Sporting  Life  newspaper. 

Held  (on  appeal),  that  the  registration  at  Stationers'  Hall, 
under  the  Copyright  Acts,  of  an  assignment  of  a  share  in  the 
newspaper,  was  of  no  effect,  the  title  of  a  newspaper  not  be- 
ing a  subject  of  copyright. 

Per  Wood,  L.  J.  "  It  appears  to  us  that  there  is  nothing  analo- 
gous to  copyright  in  the  name  of  a  newspaper,  but  that  the  pro- 
prietor has  a  right  to  prevent  any  other  person  from  adopting  the 
same  name  for  any  other  similar  publication  ;  and  that  this  right  is 
a  chattel  interest  capable  of  assignment  was  held  in  Longman  v.  Tripp 
and  Ex  par  e  Foss. 

293.  Barnard  v.  Pillow. 
March  19,  1868.     Lord  Romilly,  M.  R.  —  W.  N.  1868,  p.  94. 

THE  plaintiff  being  a  writer  and  composer  of  songs  and 
music,  under  the  name  of  "Claribel"  the  defendants,  music 
publishers,  published  and  sold  certain  songs,  of  which  the 
plaintiff  had  written  the  words  but  not  composed  the  music, 

1  A  critical  examination  of  this  case  law  on  which  it  rests  quite  as  far  as 
will  disclose  that  it  may  not  have  been  would  be  inferred  from  a  casual  read- 
intended  to  carry  the  conclusions  of  ing  of  the  opinion. 

167 


STEPHENS  V.  DE  CONTO. 

with   the   words,  "  Song,  written  by  Claribel"  on  the  title- 
page. 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendants  from  publishing  the  songs  in  that  manner,  as 
being  calculated  to  mislead  as  to  the  authorship  of  the  mu- 
sic, refused,  on  the  ground  that  the  words  "  written  by  "  did 
not  mean  the  same  as  "  written  and  composed  by"  and  that 
ordinary  purchasers  using  ordinary  caution  would  not  be  de- 
ceived. 


294.  Boulnois  v.  Peake. 
March  19,  1868.     Giffard,  V.  C.—  W.  N.  1868,  p.  95. 

THE  plaintiffs  being  carriage-dealers,  who  had  for  many 
years  sold  carriages  at  the  "  Carriage  Bazaar "  in  Baker 
Street,  the  defendant  set  up  in  business  as  a  carriage-dealer 
at  a  house  also  in  Baker  Street,  which  at  first  he  styled  the 
"  Carriage  Repository"  but  afterwards  began  to  style  the 
"  New  Carriage  Bazaar"  and  to  describe  as  "  opposite 
Madame  Tussaud's"  which  was  not  strictly  correct. 

On  motion  by  the  plaintiffs,  injunction  granted  to  restrain 
the  defendant  from  applying  those  designations  to  his  shop, 
on  the  ground  that  the  defendant  had  acted  with  the  intention 
of  gaining  an  unfair  advantage  over  the  plaintiffs.1 


295.  Stephens  v.  De  Conto. 

March,  1868.     N.   Y.  Super.  Ct.:  Monell,  J.  —  lAW).  Pr.  N.  S.  47;  30 
N.  Y.  Super.  Ct.  (7  Robertson)  343;  R.  Cox,  442. 

THE  plaintiff  being  the  proprietor  of  a  newspaper  called  La 
Cronica,  the  defendant  began  to  publish  another  paper  under 
the  name  of  El  Cronista. 

Injunction,  which  had  been  granted  to  restrain  the  defendant 
from  so  doing,  dissolved,  on  the  ground  that  the  names  were 
sufficiently  dissimilar  to  prevent  deception.2 

1  See  Howard  v.  Henriques,  108.  2  See  Hogg  v.  Kirby,  10. 

168 


SCHWEITZER  V.  ATKINS. 

296.  Falkinburg  v.  Lucy. 
April,  1868.     Cat.  Sup.  Ct.  —  S5  Cal  52;  R.  Cox,  448. 

THE  plaintiffs  being  manufacturers  of  washing  powder, 
which  they  sold  in  packets  labelled  with  a  complicated  design, 
the  defendants  began  to  sell  other  washing  powder  in  packets 
somewhat  similarly  labelled. 

On  appeal,  injunction,  which  had  been  granted  to  restrain 
the  defendants  from  infringing  the  plaintiffs'  rights,  dissolved, 
on  the  ground  that  the  design  which  constituted  the  plaintiffs' 
trade-mark  had  not  been  copied,  and  that  the  particulars  in 
which  the  defendants'  label  resembled  the  plaintiffs'  were  in 
the  nature  of  directions  for  use,  words  in  common  use,  etc., 
and  not  the  subjects  of  a  right  of  trade-mark.1 

297.  Stevens  v.  Paine. 
June  11,  1868.     Gi/ard,  V.  C.—  18  L.  T.  N.  S.  600. 

THE  defendants  having  been  in  the  employ  of  the  plain- 
tiffs' firm  of  "  Clayton  $  Co."  left  them,  and  began  to  issue 
circulars  calculated  to  mislead  the  public  into  the  belief  that 
the  firm  of  Clayton  &  Co.  had  ceased  to  carry  on  business,  and 
that  they  had  been  succeeded  by  the  defendants. 

On  motion  by  the  plaintiffs,  injunction  granted  to  restrain 
the  defendants  from  so  doing. 


298.  Schweitzer  v.  Atkins. 

July  16,  1868.     Malins,  V.   C.  —  37  L.  J.  Ch.  847;  19  L.  T.  N.  S.  6 ;  16 

W.  R.  1080. 

THE  plaintiff  being  the  manufacturer  of  a  preparation  of 
cocoa,   which   he    sold    in   packets   labelled   with    the  words 
"  Schweitzer's    Cocoatina,    or   Anti- Dyspeptic   Cocoa,   Regis- 
tered" the  defendant  Atkins,  who  had  been  in  the  plaintiff's 
employ,  left  him,  and  went  into  partnership  with  the  defend- 
ant Otto  Schweitzer,  and  began  to  sell  another  preparation 
1  See  Coffeen  v.  Brunton,  99. 
169 


MESSEROLE  V.  TYNBERG. 


under  the  name  of  '•'•Otto  Schweitzer,  Atkins  £  Co.'s  Cacaotine, 
Registered,'"  in  packets  labelled  in  imitation  of  the  plaintiff's. 
On  motion  by  the  plaintiff,  injunction  granted  to  restrain 
the  defendants  from  infringing  the  plaintiff's  rights. 


299.  Bivero  v.  Norris. 

July  30,  1868.     Giffard,  V.  C.  —  Seton,  4th  ed.  236. 

THE  defendant  had  at  the  docks  boxes  of  cigars  branded 
and  labelled  in  imitation  of  the  plaintiff's  trade-mark  and 
label. 

On  motion  by  the  plaintiff,  injunction  granted  to  restrain 
the  defendant  from  passing  such  boxes  of  cigars  from  the 
docks  into  the  market. 

30O.  Messerole  v.  Tynberg. 

September,  1868.     N.  Y.  C.  P.  :  Brady,  J.  —  4  Abb.  Pr.  N.  S.  410;  36 
How.  Pr.  14;  R.  Cox,  479. 

THE  plaintiffs  being  manufacturers  of  paper  collars,  which 
they  sold  with  the  name  "  Bismarck  "  on  them,  the  defendant 
began  to  sell  the  same  article  bearing  the  same  name. 

Motion  by  the  defendant  to  dissolve  an  injunction  which 
had  been  granted  to  restrain  him  from  so  doing  refused. 

"  Whenever  a  trade-mark  is  employed  to  designate  a  particular 
manufacture,  whether  the  term  used  is  a  popular  one  formed  of  words 
or  symbols  common  to  the  world,  or  one  expressly  created  for  the 
purpose  to  which  it  is  applied,  and  the  manufacture  acquires  reputa- 
tion and  becomes  valuable  as  an  article  of  merchandise,  an  imitator 
thereof,  for  a  kindred  or  similar  manufacture,  is  presumed  to  intend 
wrongfully,  and  the  burden  rests  upon  him  to  show  that  there  is 
either  no  property  in  the  term  or  symbol  arising  from  priority  of  use 
for  the  article  to  which  it  has  been  applied,  or  that  no  deceit  or  injury 
can  result  from  the  imitation." 

170 


BOARDMAN  V.  THE  MERIDEN  BRITANNIA  COMPANY- 

301.    Rowley  v.  Houghton. 

September,  1868.     Phila.  C.  P. :  Ludlow,  J.—  2  Brews.  303;  7  Phila.  39; 

R.  Cox,  486. 

THE  plaintiff  being  a  manufacturer  of  glass  jars,  which  he 
stamped  with  the  words  "  The  Hero"  and  who  afterwards 
began  to  stamp  his  jars  with  the  words  "  The  Heroine"  the 
defendant  began  to  stamp  other  jars  with  the  words  "  The 
Heroine"  before  the  plaintiff  adopted  those  words  as  an  al- 
ternative for  "  The  Hero" 

Injunction  granted  to  restrain  the  defendant  from  using  the 
name  "  The  Heroine"  although  he  had  used  that  name  before 
the  plaintiff  had  adopted  it  as  an  alternative  for  his  mark 
"  The  Hero." 

"  No  right  can  be  absolute  in  a  name  as  a  name  merely.  It  is  only 
when  that  name  is  printed  or  stamped  upon  a  particular  label  or  jar, 
and  thus  becomes  identified  with  a  particular  style  and  quality  of 
goods,  that  it  becomes  a  trade-mark." 


302.  Boardman  v.  The  Meriden  Britannia  Company. 
September,  1868.     Conn.  Sup.  Ct.  —  35  Conn.  402;  R.  Cox,  490. 

THE  plaintiffs  being  makers  of  teaspoons,  which  they  sold 
in  packets  bearing  labels,  of  which  the  principal  features 
were  their  names  and  a  number  coupled  with  some  other 
particulars,  the  defendant  company  began  to  sell  other  tea- 
spoons in  packets  with  labels  similar  in  general  appearance 
to  the  plaintiffs',  and  with  the  same  numbers,  but  with  the 
name  of  the  company. 

Injunction  granted  to  restrain  the  defendants  from  infring- 
ing the  plaintiffs'  rights. 

Per  Carpenter,  J.  "  The  object  or  purpose  of  the  law  in  protect- 
ing trade-marks  as  property  is  twofold  :  first,  to  secure  to  him  who 
has  been  instrumental  in  bringing  into  market  a  superior  article  of 
merchandise  the  fruit  of  his  industry  and  skill ;  second,  to  protect  the 
community  from  imposition,  and  furnish  some  guarantee  that  an  arti- 

171 


CAVE  V.  MYERS. 

cle  purchased  as  the  manufacture  of  one  who  has  appropriated  to  his 
own  use  a  certain  name,  symbol,  or  device  as  a  trade-mark,  is  genu- 
ine. Consequently,  the  violation  of  property  in  trade-marks  works 
a  twofold  injury :  the  appropriator  suffers,  in  failing  to  receive  that 
remuneration  for  his  labors  to  which  he  is  justly  entitled ;  and  the 
public  in  being  deceived  and  induced  to  purchase  articles  manufact- 
ured by  one  man,  under  the  belief  that  they  are  of  the  production  of 
another." 

"  It  may  be  difficult  to  give  to  bare  numbers  the  effect  of  indicating 
origin  or  ownership,  and  it  may  be  still  more  difficult  to  show  that 
they  were  originally  designed  for  that  purpose ;  but  if  it  be  once 
shown  that  that  was  the  original  design,  and  that  they  have  had  that 
effect,  it  may  not  be  easy  to  assign  a  reason  why  they  should  not 
receive  the  same  protection,  as  trade-marks,  as  any  other  symbol  or 
device.  But  in  this  case  the  numbers  were  associated  with  the  name 
of  the  plaintiffs,  and  the  form,  color,  and  general  arrangement  of  the 
labels ;  and,  by  virtue  of  that  connection,  form  an  important  part  of 
the  trade-mark  itself." 1 

303.   Newling  v.  Dobell. 
November  19,  1868.    Malins,  V.  C.  —  38  L.  J.  Ch.  Ill ;  19  L.  T.  N.  S.  408. 

THE  defendant,  after  having  sold  to  the  plaintiff  the  good- 
will of  his  tailor's  business,  and  covenanted  "  not  to  carry  on 
or  be  concerned  or  interested  in "  the  business  of  a  tailor 
within  five  miles  of  his  former  shop,  entered  as  a  journeyman 
into  the  service  of  his  nephew,  who  carried  on  the  same  trade, 
and  under  the  same  name,  within  the  five  miles. 

On  motion  by  the  plaintiff,  injunction  granted  to  restrain 
the  defendant  from  so  committing  a  breach  of  his  covenant. 


304.  Cave  v.  Myers. 
December  3,  1868.     Giffard,  V.  C.— Selon,  4th  ed.  238. 

THE  plaintiffs  carrying  on  business  at  3lA  Wigmore  Street, 

and  1  Edwards  Street,  Portman  Square,  as  manufacturers  and 

sellers  of  trunks  and  ladies'  dress  baskets  (for  which  they  had 

gained  a  first  prize  at  the  Paris  Exhibition  of  1867),  under 

1  See  Gillott  v.  Esterbrook,  269. 

172 


CAVE  V.  MYERS. 

the  name  of  "  H.  J.  Cave  £  Sons"  and  having  been,  since 
1863,  appointed  to  supply  their  goods  to  the  Princess  of 
Wales,  the  defendant,  who  occupied  a  shop  at  the  corner  of 
Wigmore  Street  and  Marylebone  Lane,  close  to  the  plaintiffs' 
shop,  adopted  the  name  of  "  Cavendish  House  "  for  his  estab- 
lishment, and  had  it  painted  up  by  his  express  order  over  the 
frontage,  in  place  of  his  name  "  Myers"  in  such  a  manner 
that  "  Cave  "  alone  appeared  on  the  Wigmore  Street  side,  the 
remaining  letters  being  over  the  angle  and  in  Marylebone 
Lane  ;  and  he  also  exhibited  a  board  to  the  following  effect : 
"  Paris  Exposition,  1867.  By  Her  Majesty's  Royal  Letters 
Patent.  The  only  prize  awarded  for  the  Royal  Alexandra 
expanding  and  collapsing  dress  baskets.  Designed  for  Her 
Royal  Highness  the  Princess  of  Wales,  1865.  The  Dublin 
Exhibition;"  the  fact  being  that,  while  the  defendant  had 
gained  the  only  prize  at  Dublin,  the  plaintiffs  had  gained  the 
only  prize  at  Paris,  though  the  defendant  had  competed.  The 
defendant  also  exhibited  a  letter  from  a  member  of  the  house- 
hold of  the  Princess  of  Wales,  acknowledging  the  receipt  of 
an  application  by  the  defendant  for  the  appointment  of  trunk- 
maker  to  the  Princess,  but  containing  no  promise  of  such  an 
appointment,  in  such  a  manner  as  to  cause  it  to  be  taken  as 
containing  an  actual  appointment. 

On  motion  by  the  plaintiffs  for  an  injunction  to  restrain 
the  defendant  from  representing  his  business  to  be  the  plain- 
tiffs', and  from  using  any  name,  inscription,  or  device  calcu- 
lated to  mislead  the  public  : 

Held,  (1.)  That  the  plaintiffs  were  not  disentitled  by  reason 
of  having  described  themselves  as  patentees,  they  having 
secured  the  exclusive  manufacture  of  their  baskets  by  registra- 
tion as  a  design,  though  not  by  letters  patent ;  (2.}  that  the 
plaintiffs  were  not  disentitled  by  reason  of  a  moderate  delay, 
but  that  they  were  justified  in  a  certain  degree  of  delay  in 
order  to  obtain  evidence  of  actual  deception,  which  they  had 
succeeded  in  doing  in  several  cases  ;  (3.)  that  the  defendant 
had  acted  in  a  manner  intended  and  calculated  to  deceive,  and 
which  had  deceived,  and  that  the  injunction  must  be  granted. 

173 


TOWN  V.  STETSON. 

3O5.  Colton  v.  Thomas. 

December,  1868.     Phila.  C.P.:  Allison,  P.  J.  —  7  Phila.  257;  2  Brews. 
308;  R.  Cox,  507. 

THE  plaintiff  practising  as  a  dentist  under  the'name  of  "The 
Colton  Dental  Association"  the  defendant,  who  had  been  in 
the  plaintiff's  employ,  left  him,  and  set  up  in  business  as  a 
dentist,  and  began  to  style  himself  on  his  door  and  on  his  cards 
"Dr.  F.  R.  Thomas,  late  Operator  at  the  Colton  Dental  Rooms," 
the  words  "  late  operator  at  the  "  being  in  very  small  letters. 

Injunction  granted  to  restrain  the  defendant  from  using 
such  signs  and  cards,  and  from  representing  his  place  of  busi- 
ness to  be  the  plaintiff's. 

"  An  imitation  with  partial  difference,  such  as  the  public  would  not 
observe,  does  as  much  harm  as  an  entire  counterpart.  If  such  varia- 
tions impose  on  a  portion  or  class  of  customers  only,  it  is  evident 
that  the  damage  is  of  the  same  character,  though  varied  in  amount  or 

degree." 

» 

306.  Town  v.  Stetson. 

December,  1868.     N.  Y.  C.  P.— 5  Abb.  Pr.  N.  S.  218;  3  Daly,  53;  R. 

Cox,  514. 

THE  plaintiff  being  a  dealer  in  "  Desiccated  Codfish"  the 
defendant  began  to  sell  fish  under  the  same  name. 

On  motion  by  the  defendant,  injunction  which  had  been 
granted  on  motion  by  the  plaintiff  to  restrain  the  defendant 
from  using  that  name  for  his  fish  dissolved,  the  name  being 
purely  descriptive  of  the  article. 

Per  Barrett,  J.  "  No  manufacturer  can  acquire  a  special  property 
in  an  ordinary  term  or  expression,  the  use  of  which  as  an  entirety  is 
essential  to  the  correct  and  truthful  designation  of  a  particular  article 
or  compound." 

174 


EMERSON  v.  BADGER. 


307.  Ferguson  v.  The  Davol  Mills. 

December,  1868.     Phila.  C.P.:  Allison,  P.  J.  —  2   Brews.   314;  7  Phila. 
253;  R.  Cox,  516. 

THE  plaintiffs  being  manufacturers  of  cotton  goods,  which 
they  sold  ticketed  with  a  label  containing  the  letter  K  in  a 
double  circle,  with  the  words  "  No"  and  "  Yds.,"  the  defend- 
ants sold  other  cotton  goods  with  a  similar  label. 

Injunction  to  restrain  the  defendants  from  using  the  label 
refused,  on  the  ground  that  the  label  was  not  indicative  of  the 
manufacturer. 


308.  Palmer  v.  Harris. 

January,  1869.     Perm.  Sup.  Ct.  —  60  Penn.  156;  R.  Cox,  523;  8  Am.  L. 

Reg.  N.  S.  137. 

THE  plaintiff  being  a  maker  of  cigars,  which  he  sold  in 
boxes  bearing  labels  on  which  the  words  "  Golden  Crown  " 
and  other  matters  were  printed,  the  defendant  began  to  sell 
other  cigars  in  boxes  very  similarly  labelled. 

Injunction  to  restrain  the  defendant  from  infringing  the 
plaintiff's  rights  refused,  on  the  ground  that  the  plaintiff's 
labels  contained  false  statements  as  to  his  cigars  being  made 
in  Havana,  etc.,  and  that,  notwithstanding  that  the  state- 
ments were  in  the  Spanish  language,  and  not  in  English.1 


309.  Emerson  v.  Badger. 
January,  1869.     Mass.  Sup.  Ct.  —  101  Mass.  (5  Browne)  82. 

CHARLES  EMERSON,  the  inventor  of  a  razor  strop  which  he 
called  '•\Emer son's  Mastic  Razor  Strop"  and  sold  in  cases  la- 
belled (among  other  things)  with  the  words  "Charles  Emer- 
son, Emerson  Place,  Charlestown,"  taught  the  trade  to  five 
of  his  nephews,  and  allowed  such  of  them  as  left  him  in  his 
lifetime,  and  set  up  on  their  own  account,  to  use  his  labels  ; 
B.  Badger  being  the  earliest  of  them.  At  Charles  Emerson's 

1  See  Pidding  v.  How,  60. 

175 


BASS  V.  DAWBEB. 

death  intestate,  the  plaintiff,  being  one  of  the  five  nephews, 
and  bearing  the  same  name,  bought  his  premises,  but  the 
business  was  not  conveyed  to  any  one,  and  the  customers 
were  distributed  among  the  four  nephews  (exclusive  of  B. 
Badger),  and  the  stock  in  trade  among  the  five.  B.  Bad- 
ger continued  to  carry  on  his  own  trade  till  his  death,  and 
the  defendant,  his  son,  after  him  ;  and  the  latter  used  labels 
describing  his  razor  strops  as  "  Genuine  Emerson's  Elastic 
Razor  Strop,"  and  stating  him  to  be  the  "  son  and  successor 
of  B.  Badger,  senior  successor  to  the  original  Charles  Emer- 
son, Emerson  Place,  Charlestown,"  and  stating  the  facts  and 
dates  correctly. 

Suit  by  Charles  Emerson,  junior,  for  an  injunction  to  re- 
strain the  defendant  from  using  the  name,  address,  etc. 

Injunction  refused,  on  the  ground  that  no  fraud  was  shown, 
and  that  the  defendant  had  acted  within  his  rights. 


31O.  Bass  v.  Dawber. 
January  21,  1869.     Lord  Romilly,  M.  R.  —  19  L.  T.  N.  S.  626. 

THE  plaintiffs  being  brewers,  the  prominent  features  of 
whose  trade-mark  consisted  of  a  red  pyramid,  the  words 
"  Bass  $•  Co.'s  Pale  Ale"  and  the  fac-simile  of  the  signature 
"  Bass  $  Co."  the  defendants  began  to  use  labels  bearing  a 
somewhat  general  resemblance  to  the  plaintiffs',  but  contain- 
ing a  red  Spanish  shield  reversed,  the  words  "  East  India  Pale 
Ale"  and  a  fac-simile  of  the  signature  "  Dawbet  $•  Co" 

Injunction  to  restrain  the  defendants  from  infringing  the 
plaintiffs'  rights  refused,  with  costs,  the  defendants  having 
offered  to  print  their  crest  in  black  on  the  shield. 

"If  a  person  has  bonafide  taken  a  label  or  trade-mark  which  does 
resemble  the  label  of  another  person,  and  this  is  not  done  with  the 
intention  to  deceive,  the  court  will  not  require  him  to  change  it 
completely,  because  a  change  in  a  trade-mark  is  a  serious  thing. 
....  No  tradesman  likes  to  alter  his  trade-mark  completely  ;  it  is 
like  beginning  a  new  firm  ;  and  therefore  in  dealing  with  cases  of  this 
description,  if  the  defendant  has  acted  bond  jide,  the  court  will  not 
compel  him  by  injunction  to  make  a  totally  different  thing." 

176 


FILLEY  V.  FASSETT. 

311.  Dixon  v.  Holden. 

February  24,  1869.    Malins,  V.  C.  — L.  R.  1  Eq.  488 ;    10  L.  T.  N.  S.  357; 

17  W.  R.  482. 

ON  motion  by  the  plaintiff  injunction  granted  to  restrain 
the  defendant  from  publishing  an  advertisement  falsely  stat- 
ing that  the  plaintiff  was  a  member  of  a  bankrupt  firm,  as 
being  calculated  to  affect  injuriously  his  property  in  his  name 
and  reputation. 

312.  Du  Boulay  v.  Du  Boulay. 

March  15,  1869.  Privy  Council—  L.  R.  2  P.  C.  430-441 ;  6  Moo.  P.  C. 
N.  S.  31  ;  38  L.  J.  P.  C.  35-38;  22  L.  T.  N.  S.  228-231;  17  W.  R. 
594. 

ON  appeal  from  the  Windward  Is.  Ct.  of  App.,  injunction 
to  restrain  the  defendant  from  assuming  the  plaintiff's  family 
name  refused,  on  the  ground  that  there  was  no  right  of  prop- 
erty in  a  name,  apart  from  a  business. 

Per  Lord  Chelmsford.  "  In  this  country  we  do  not  recognize  the 
absolute  right  of  a  person  to  a  particular  name  to  the  extent  of  en- 
titling him  to  prevent  the  assumption  of  that  name  by  a  stranger. 
The  right  to  the  exclusive  use  of  a  name  in  connection  with  a  trade 
or  business  is  familiar  to  our  law ;  and  any  person  using  that  name, 
after  a  relative  right  of  this  description  has  been  acquired  by  another, 
is  considered  to  have  been  guilty  of  a  fraud,  or,  at  least,  of  an  inva- 
sion of  another's  "right,  and  renders  himself  liable  to  an  action,  or  he 
may.be  restrained  from  the  use  of  the  name  by  injunction.  But  the 
mere  assumption  of  a  name  which  is  the  patronymic  of  a  family  by 
a  stranger  who  had  never  before  been  called  by  that  name,  whatever 
cause  of  annoyance  it  may  be  to  the  family,  is  a  grievance  for  which 
our  law  affords  no  redress." 

313.  Filley  v.  Fassett. 

March,  1869.     Missouri  Sup.  Ct.—U  Mo.  173;  R.  Cox,    530  ;  8  Am.  L. 
Reg.  N.  S.  402. 

THE    plaintiff   being   a   maker   of   stoves,   which  he   sold 
stamped  with  the  words  "  Charter  Oak,"  and  a  sprig  of  oak 
12  177 


AMOSKEAG  MANUFACTURING  COMPANY  V.  GARNER, 

leaves,  the  defendant  sold  other  stoves  stamped  with  the 
words,  but  not  with  the  sprig  of  leaves. 

Injunction  granted  to  restrain  the  defendant  from  infring- 
ing the  plaintiff's  rights,  notwithstanding  that  only  a  portion 
of  the  plaintiff's  mark  appeared  on  his  stoves. 

And  Held,  that  it  was  no  defence  that  other  persons  had 
used  the  same  words  subsequently  to  the  plaintiff,  without  his 
knowledge,  he  having  taken  proceedings  in  two  instances 
which  had  become  known  to  him. 

Per  Currier,  J.  "  The  imitation  of  an  original  trade-mark  need 
not  be  exact  or  perfect.  It  may  be  limited  and  partial ;  uor  is  it 
requisite  that  the  whole  should  be  pirated.  Nor  is  it  necessary  to 
show  that  any  one  has,  in  fact,  been  deceived,  or  that  the  party  com- 
plained of  made  the  goods  ;  nor  is  it  necessary*  to  prove  intentional 
fraud.  If  the  court  sees  that  the  plaintiff's  trade-marks  are  simu- 
lated in  such  a  manner  as  probably  to  deceive  customers  or  patrons 
of  his  trade  or  business,  the  piracy  should  be  checked  at  once  by 
injunction." 


314.    The   Amoskeag    Manufacturing    Company    v.    Gar- 
ner.   (1.) 

May,  1869.     N.  Y.  Sup.   Ct.  :   Barnard,  J.— 55  Barb.  151;  6  Alb.  Pr. 
N.  S.  265;  R.  Cox,  541. 

THE  plaintiffs  being  manufacturers,  but  not  printers,  of 
cotton  cloths,  who  placed  the  word  "  Amoskeag "  on  their 
cloths,  the  defendants,  who  were  printers  of  made  cloths,  but 
did  not  manufacture  them,  placed  the  same  word  on  their 
printed  cloths. 

On  motion  by  the  defendants  injunction  which  had  been 
granted,  on  motion  by  the  plaintiffs,  to  restrain  them  from  so 
doing,  dissolved,  on  the  ground  that  the  two  trades  were  dis- 
tinct, and  also  the  classes  of  goods  produced  ;  and 

Held,  further,  that  a  delay  of  nine  years  after  the  plaintiffs 
became  aware  of  the  use  of  the  name  by  the  defendants  dis- 
entitled them  to  relief.1 

1  This  decision  was  reversed  on  hearing  on  the  merits.     See  500. 

178 


MARSHALL  V.  ROSS. 

315.  Graham  and  Co.  v.  Kerr,  Dods  and  Co. 
June  14,  1869.     Calcutta  High  Court :  Phear,  J.  —  3  Beng.  L.  R.  App.  4. 

THE  plaintiffs  being  Scotch  merchants  trading  with  India, 
the  defendants  sold  in  India  goods  bearing  a  mark  very  sim- 
ilar to  that  of  the  plaintiffs'. 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendants  from  infringing  the  plaintiffs'  trade-mark,  not- 
withstanding that  the  defendants  had  only  sold  the  goods 
marked  in  the  same  manner  as  when  received  from  Scotland, 
and  that  no  fraudulent  intention  was  proved. 

"  It  is  not  enough  to  say  that  there  was  no  fraudulent  intention. 
That  is  no  reason  why  an  injunction  should  not  be  granted.  I  do 
not  think  I  have  any  option  if  the  marks  which  the  defendants  have 
used  are  those  of  the  plaintiffs ;  no  matter  what  their  intention  was,  a 
perpetual  injunction  would  be  granted.  In  the  mean  time  an  inter- 
locutory injunction  must  issue.  There  is  obviously  a  close  imita- 
tion." 


316.  Marshall  v.  Ross. 

July  30,  1869.     James,  V.  C.  —  L.  R.  8  Eq.  651;  39  L.J.  Ch.  225;  21 
L.  T.  N.  S.  260;  17  W.  R.  1086. 

THE  plaintiffs  being  manufacturers  of  thread  at  Shrews- 
bury, who  sold  their  thread  labelled  with  the  words  "Shrews- 
bury—  Marshall  $•  Co.  —  Patent  Thread"  foreign  thread 
labelled  " Schrewsbury — Marchal  —  Patent  Thread"  was  con- 
signed to  the  defendant,  a  shipping  agent,  from  abroad. 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendant  from  dealing  with  or  disposing  of  the  thread, 
notwithstanding  that  the  plaintiffs  had  no  patent  for  the 
thread,  on  the  ground  that  such  use  of  the  word  "  patent " 
had,  by  long  usage,  come  only  to  denote  the  character  of  the 
thread,  and  did  not  imply  the  existence  of  any  patent. 

179 


LOCKWOOD  V.  BOSTWICK. 

317.   Chance  v.   Sheppard. 
July  30,  1869.     Malins,  V.  C. 

THE  plaintiff  being  the  proprietor  of  a  newspaper  called 
"  The  Bedfordshire  Express  and  General  Advertiser  for  the 
Counties  of  Cambridge,  Hertfordshire,  Huntingdonshire,  and 
Middlesex,"  the  defendant  began  to  publish  another  paper 
under  the  name  of  "  The  Bedfordshire  Express  and  General 
Advertiser  for  the  County,"  the  words  "  The  Bedfordshire 
Express"  being  printed  by  the  defendant  in  the  same  style  as 
by  the  plaintiff. 

On  motion  by  the  plaintiff  injunction  granted  to  restrain 
the  defendant  from  so  doing. 


318.    Newby  v.   The  Oregon  Central  Railway  Company. 

August  3,  1869.     U.  S.  C.  C.  Dt.  of  Oregon:  Deady,  J.  —  Deady,  609  ; 
9  Amer.  Rep.  331  n. 

THE  plaintiff  being  a  bondholder  and  creditor  of  the  "  Ore- 
gon Central  Railway  Co."  the  defendant  company  was  started 
under  the  same  name. 

Suit  for  an  injunction  to  restrain  the  defendant  company 
from  assuming  the  name,  on  the  ground  that  such  a  course 
of  conduct  was  calculated  to  depreciate  the  property  of  the 
original  company. 

On  demurrer,  Held,  that  the  original  company  would  be 
entitled  to  an  injunction,  but  that  the  plaintiff  was  not  enti- 
tled to  sue  until  that  company  had  refused  itself  to  bring  the 
suit. 


319.  Lockwood  v.  Bostwick. 

September,  1869.    N.   Y.  C.  P  :  Daly,  C.  J.  —  2  Daly,  521;  R.   Cox, 

555. 

THE  plaintiffs  being  the  assignees  of  the  business  of  a  cer- 
tain clarifying  company,  manufactured,  in  succession  to  the 
company,  a  pomade  under  the  name  of  "  Bovilene"  The 

180 


TONGE  V.  WARD. 

defendants  began  to  sell  another  pomade  under  the  name  of 
"  Bovina" 

Motion  by  the  defendants  to  dissolve  an  injunction  which 
had  been  granted  to  restrain  them  from  infringing  the  plain- 
tiffs' rights  refused. 

"  There  is  a  right  of  property  in  a  trade-mark  which  is  capable  of 
being  transferred  to  another." l 


32O.  Bradbury  v.  Beeton. 

November  3,  1869.     Malins,  V.   C.  —  39L.J.  Ch.  57;  21  L.  T.  N.   S. 
323;  18  W.  R.  33. 

THE  plaintiffs  being  the  proprietors  of  "  Punch"  published 
weekly  at  3cZ.,  the  defendant  began  to  publish  another  weekly 
comic  paper  at  lc?.,  under  the  name  of  "  Punch  and  Judy." 

Motion  by  the  plaintiffs  for  an  injunction  to  restrain  the 
defendant  from  so  doing  refused,  on  the  ground  that  deception 
was  not  probable,  the  names,  title-pages,  and  prices  being 
sufficiently  dissimilar. 

"  Every  person  who  uses  a  trade-mark,  be  it  a  label  on  a  bottle,  or 
the  name  or  title  of  a  periodical  or  magazine,  by  his  appropriation  and 
user  of  the  name  acquires  a  property  in  that  name,  and  has  a  right 
to  restrain  any  other  person  from  using  the  same  name  in  such  a 
manner  as  would  lead,  or  be  calculated  to  lead,  the  public  to  believe 
that  they  are  purchasing  one  thing  when  in  truth  they  are  purchasing 
another."  2 

321.  Tonge  v.  Ward. 
November  8,  1869.     Lord  Romilly,  M.  R.  —  21  L.  T.  N.  S.  480. 

THE  plaintiffs  being  cloth  manufacturers  who  marked  their 
goods  with  the  name  "  Tonge's"  the  defendants'  manager,  in 
obedience  to  an  order  from  a  customer,  but  without  the  de- 
fendants' own  knowledge,  affixed  to  goods  of  the  defendants' 
make  tickets  with  the  name  "  Tung's." 

Injunction  granted  to  restrain  the  defendants  from  infring- 
ing the  plaintiffs'  rights  ;  and 

1  See  Burnett  v.  Phalon,  277.  2  See  Hogg  v.  Kirby,  10. 

181 


HUDSON  V.  OSBORNE. 

Held,  that  the  defendants  must  also  pay  costs,  although 
they  had  stated  their  ignorance,  and  offered  to  give  an  under- 
taking to  pay  £50  to  a  charity,  since  they  had  not  offered  to 
submit  to  a  decree  in  the  terms  prayed. 

"The  defendants  are  bound  to  know  what  their  agents  do,  and  if 
they  do  not  know,  they  are  responsible  exactly  as  if  they  did  know." 

322.  The  Wheeler  and  Wilson  Manufacturing  Company 
v.  Shakespear. 

November  10,  1869.     James,  V.  C.  —  39  L.  J.  Ch.  36. 

THE  plaintiffs  being  American  sewing-machine  manufact- 
urers, the  defendant,  who  had  been  their  agent  for  the  sale  of 
their  sewing-machines,  continued  to  represent  himself  to  be 
such  agent  after  the  determination  of  his  agency. 

Injunction  granted  to  restrain  the  defendant  from  so  doing ; 
but 

Held,  that  no  injunction  could  be  granted  to  restrain  the 
use  of  the  words  "  Wheeler  $•  Wilson,"  since  they  were  in- 
dicative of  a  machine  manufactured  on  a  certain  principle, 
whether  by  the  plaintiffs  or  others. 

'•  It  seems  to  me  that  the  name  '  Wheeler  $  Wilson '  machine  has 
come  to  signify  the  thing  manufactured  according  to  the  principle  of 
the  patent.  That  being  so,  I  cannot  restrain  anybody,  after  the  ex- 
piration of  the  patent,  from  representing  his  article  as  being  the  article 
which  was  so  patented.  A  man  cannot  prolong  his  monopoly  by  say- 
ing '  I  have  got  a  trade-mark  in  the  name  of  a  thing  which  was  the 
subject  of  the  patent.' " 1 


323.  Hudson  v.  Osborne. 

November  11,  1869.     James,  V.  C.  —39  L.  J.  Ch.  79  ;  21  L.  T.  N.  S. 

386. 

THE  plaintiffs,  Hudson  Brothers,  having  purchased  the 
good-will,  stock  in  trade,  etc.,  of  the  business  carried  on  at 
"  Osborne  House,'1''  Ludgate  Hill,  by  the  defendant  George 

1  See  Singer  Man.  Co.  v.  Wilson,  477. 

182 


THE  LEATHER  CLOTH  COMPANY  V.  LORSONT. 

Osborne,  from  his  assignees  in  bankruptcy,  the  defendants, 
Osborne  and  Parker  (the  latter  having  formerly  been  Os- 
borne's  manager),  set  up  in  business  in  the  Old  Bailey,  and 
styled  their  new  establishment  "  Osborne  House"  and  put 
out  circulars,  advertisements,  etc.,  representing  that  they  were 
carrying  on  the  business  formerly  carried  on  by  the  defendant 
Osborne  and  sold  to  the  plaintiffs. 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendants  from  so  doing  ;  and 

Held,  that  an  objection  that  the  plaintiffs  were  disentitled 
by  reason  of  having  retained  on  their  door  a  brass  plate  bear- 
ing the  defendant  Osborne's  name,  failed. 

"  In  substance  there  is  no  distinction  between  a  sale  by  a  man  him- 
self of  his  business  and  the  good-will  of  it,  and  the  sale  by  the  assign- 
ees in  bankruptcy  of  all  a  bankrupt's  assets  of  every  kind." 

"  It  has  been  settled  that  there  is  no  implied  covenant  of  any  kind 
in  the  sale  by  an  individual  himself  of  the  good-will  of  his  business ; 
but  it  seems  to  be  settled  that  a  trader,  whose  business  and  the  good- 
will of  whose  business  have  been  sold  by  himself,  or  by  any  person 
deriving  title  under  him,  has  no  right  to  represent  himself  as  carrying 
on  that  identical  business ;  he  has  no  right  to  use  the  trade-marks 
which  were  the  marks  of  that  business,  or  by  the  use  of  the  name,  or 
of  a  title  of  the  firm,  to  represent  himself  as  being  the  continuer  of 
that  identical  business  which  was  sold."  1 


324.   The  Leather  Cloth   Company  v.  Lorsont. 

November  12,  1869.     James,  V.  C.  —  L.  R.  9  Eq.  345  ;    39  L.  J.  Ch.  86; 
21  L.  T.  N.  S.  661  ;  18  W.  R.  572. 

SUIT  for  an  injunction  to  restrain  the  defendant  from  man- 
ufacturing leather  cloth  in  breach  of  contract,  and  from  using 
trade-marks  alleged  to  be  similar  to  the  plaintiffs'. 

Injunction  to  restrain  the  use  of  the  trade-marks  refused, 

on  the  ground  that  the  plaintiffs  were  disentitled  by  reason  of 

their  marks  wrongfully  containing  the  word  "  patent,"  there 

never  having  been  a  patent  for  the  cloth,  and  there  being  no 

1  See  Howard  v.  Henriques,  108. 

183 


LEE  V.  HALEY. 

evidence,  as  in  Marshall  v.  Ross,  to  show  that  it  indicated  a 
particular  kind  of  article  ;   and 

Held,  that  no  costs  could  be  given  as  to  this  part  of  the 
suit,  though  the  defendant  would  have  been  entitled  to  them 
if  he  had  not,  as  manager  of  the  plaintiffs,  been  personally 
concerned  in  the  adoption  and  wrongful  use  of  the  marks  by 

the  plaintiffs. 

» 

325.  Lee  v.  Haley. 

December  9,  December  18,  1869.  Malins,  V.  C.  —  21  L.  T.  N.  S.  546; 
18  W.  R.  181.  Giffard,  L.  J.  —  L.  R.  5  Ch.  155;  39  L.  J.  Ch.  284;  22 
L.  T.  N.  S.  251 ;  18  W.  R.  242. 

THE  plaintiffs  being  coal  merchants,  carrying  on  business 
at  22  Pall  Mall  as  "The  Guinea  Coal  Co."  the  defendant,  their 
former  manager,  set  up  for  himself  at  Beaufort  Buildings, 
Strand,  as  the  "  Pall  Matt  Guinea  Coal  Company"  and  after- 
wards removed  to  46  Pall  Mall. 

On  motion  by  the  plaintiffs  injunction  granted  to  re- 
strain the  defendant  from  trading  under  that  name  in  Pall 
Mall ;  and 

Held,  that  defences  of  misrepresentation  by  the  plaintiffs, 
and  of  sales  of  short  weight  by  them,  failed  on  the  evidence, 
and  that  the  plaintiffs  were  justified  in  delaying  proceedings 
from  August  till  November,  for  the  purpose  of  obtaining  evi- 
dence of  actual  deception. 

Per  Malins,  V.  C.  (21  L.  T.  N.  S.  547).  "  Put  the  case  of  a  well- 
established  shop  or  inn,  or  of  a  publication ;  directly  the  name  is  es- 
tablished so  as  to  constitute  a  reputation,  no  person  can  adopt  the 
same  name  (which,  although  not  a  copyright,  is  in  the  nature  of  a 
trade-mark),  because  by  doing  so  he  leads  the  public  to  believe  that 
they  are  dealing  with  the  party  who  has  established  the  name,  when 
in  truth  they  are  dealing  with  another  person." 

Per  Giffard,  L.  J.  (L.  R.  5  Ch.  161).  "I  quite  agree  that  the 
plaintiffs  have  no  property  in  the  name  (Guinea  Coal  Co.),  but  the 
principle  upon  which  the  cases  on  this  subject  proceed  is,  not  that 
there  is  property  in  the  word,  but  that  it  is  a  fraud  on  a  person  who 
has  established  a  trade  and  carries  it  on  under  a  given  name,  that 

184 


LEE  V.  HALEY. 


some  other  person  should  assume  the  same  name,  or  the  same  name 
with  a  slight  alteration,  in  such  a  way  as  to  induce  persons  to  deal 
with  him  in  the  belief  that  they  are  dealing  with  the  person  who  has 
given  a  reputation  to  the  name." 

"  It  is  a  fraud  on  the  part  of  a  defendant  to  set  up  a  business 
under  such  a  designation  as  is  calculated  to  lead  and  does  lead 
other  people  to  suppose  that  his  business  is  the  business  of  an- 
other person."  1 


1  It  has  been  said  that  there  is  an 
unmistakable  conflict  of  principle  be- 
tween the  cases,  and  that,  while  the 
weight  of  authority  is  to  the  effect  that 
descriptive  terms  cannot  be  protected 
under  any  circumstances,  a  considera- 
ble number  of  the  later  cases  hold  that 
the  fact  that  a  word  is  descriptive  will 
not  prevent  the  issuance  of  an  injunc- 
tion if  there  is  conclusive  evidence  of 
a  fraudulent  purpose,  and  sufficient  rea- 
son to  presume  that  the  public  will  be 
misled. 

In  Knott  v.  Morgan,  57  (which  see), 
decided  nearly  half  a  century  ago,  it 
was  held  that  the  circumstance  that 
plaintiff  had  not  an  exclusive  right  was 
of  inconsiderable  consequence,  in  view 
of  the  manifest  purpose  of  the  defend- 
ant to  commit  a  fraud  and  the  certain- 
ty of  his  succeeding.  That  case  has 
been  followed  in  a  large  number  of  de- 
cisions, and  the  principle  on  which  it 
rests  is  settled  beyond  the  possibility 
of  disturbance.  See  Williams  v.  John- 
son, 150. 

Descriptive  words  cannot  be  appro- 
priated only  because  they  are  the  com- 
mon property  of  the  public,  because  an 
exclusive  right  cannot  be  shown  to 
exist.  The  deduction  from  the  cases 
is,  that  a  man  may  not  perpetrate  a 
fraud  except  by  means  of  a  descriptive 
word. 

It  is  probable  that  the  divergence 
toward  what  would  seem  to  be  the 
broader  and  better  view  has  found  ex- 
pression in  the  cases  where  what  may 
be  classed  as  geographical  names  have 
been  involved.  It  is  obvious  that  a 


geographical  name  is  necessarily  of  a 
descriptive  nature,  and  that  no  prop- 
erty in  it  as  a  trade-mark  can  by  any 
possibility  be  acquired.  There  are, 
nevertheless,  a  number  of  instances 
where  names  of  this  kind  have  been 
protected,  notwithstanding  that  as  ap- 
plied they  were  as  true  of  defendants' 
as  of  plaintiffs'  goods.  One  of  the  ear- 
liest of  this  class  is  that  of  Lee  v.  Haley. 
It  there  appeared  that  both  parties  were 
engaged  in  business  in  Pall  Mall,  and 
that  both  sold  coal  at  a  guinea  a  ton. 
Notwithstanding  these  facts,  the  defend- 
ant was  enjoined  from  using  the  words 
'Pall  Mall  Guinea  Coal."  It  was 
shown  that  the  defendant  had  opened 
his  place  of  business  in  proximity  to 
that  of  plaintiffs ;  it  is  not  impossible 
that  had  he  gone  to  the  other  end  of 
the  street,  where  plaintiffs'  customers 
were  not  in  the  habit  of  going  to  buy 
coal,  the  injunction  would  have  been 
refused,  and  yet  the  words  would  have 
been  neither  more  nor  less  descriptive 
than  they  were  when  used  where  they 
had  the  effect  of  interfering  with  plain- 
tiffs' sales. 

In  Wotherspoon  v.  Currie,  329,  which 
arose  in  1872,  the  plaintiff's  goods  had 
acquired  reputation  under  the  name  of 
"  Glenfield"  and  in  the  language  of 
Lord  Justice  James,  in  Thorley's  Cattle 
Food  Co.\.Massam,&1\,  the  defendant 
was  actually  manufacturing  starch  at 
Glenfield  for  the  purpose  of  enabling 
him  to  say  that  he  was  manufacturing 
it  at  Glenfield.  Although  the  word  was 
as  true  of  defendant's  goods  as  it  was 
of  plaintiff's,  and  a  descriptive  term, 


185 


DEL  VALLE  V.  MAYER. 


326.  Del  Valle  v.  Mayer. 
January  20,  1870.     James,  V.  C.  —  Selon,  4th  ed.  236. 

INJUNCTION-  granted  to  restrain  the  defendant  from  pass- 
ing into  the  market  from  the  docks  goods  marked  in  imitation 
of  the  plaintiff's. 


the  House  of  Lords  granted  an  injunc- 
tion. 

In  Lea  v.  Wolff",  407,  the  court  said  : 
"The  defendants  doubtless  might,  un- 
der proper  circumstances,  employ  the 
name  of  a  place  where  an  article  is 
manufactured,  as  well  as  the  word  de- 
scriptive of  its  character  ;  but  such 
words  must  be  employed  honestly  and 
properly,  and  not  with  a  design  to  imi- 
tate and  deceive  to  the  detriment  of  an- 
other. Where  words  or  names  are  in 
common  use,  no  one  person  can  claim 
a  special  appropriation  of  them  to  his 
peculiar  use  ;  but  where  words,  and 
the  allocation  of  words,  have  by  long 
use  become  known  as  designating  the 
article  of  a  particular  manufacturer, 
he  acquires  a  right  to  them  as  a  trade- 
mark, which  competing  dealers  cannot 
fraudulently  invade.  The  essence  of 
the  wrong  is  the  false  representation 
and  deceit.  When  the  improper  design 
is  apparent,  an  injunction  should  be 
issued 

"  As  a  general  rule,  geographical 
names  cannot  be  appropriated  as  trade- 
marks, but  the  rule  has  its  exception 
where  the  intention  in  the  adoption  of 
the  descriptive  word  is  not  so  much  to 
indicate  the  place  of  manufacture  as 
to  intrench  upon  the  previous  use  and 
popularity  of  another's  trade-mark." 

See  Kinney  \.  Ba/tch,  542. 

In  T/iorley's  Cattle  Food  case,  Lord 
Justice  James  further  remarked  :  "  The 


House  of  Lords  said  the  mere  fact  that 
he  was  carrying  on  a  manufacture  at 
Glen  field,  and  was  not  therefore  telling 
a  lie  in  that  respect,  did  not  exempt  him 
from  the  consequences  of  this,  that  the 
whole  language  was  intended  and  cal- 
culated to  produce  on  the  mind  of  the 
purchasers  the  belief  that  his  article 
was  the  article  of  the  plaintiff."  The 
opinions  in  the  Cattle  Food  cases  will 
be  found  to  have  carried  the  doctrine 
perhaps  further  than  it  had  ever  been 
carried  before.  The  case  is  especially 
important,  as  it  is  of  very  recent  date 
and  decided  by  an  appellate  court. 

It  will  be  seen  that  the  conflict  be- 
tween the  cases  illustrated  by  the  ex- 
amples which  have  been  referred  to  and 
those  in  which  it  is  held  that  descrip- 
tive words  are  necessarily  publici  juris, 
has  been  constantly  assuming  a  more 
definite  form  ;  and  it  is  certainly  not 
improbable  that  what  has  been  spoken 
of  as  the  more  equitable  principle  has 
been  gaining  ground,  and  will  in  time 
come  to  be  universally  recognized.  The 
doctrine  that  descriptive  words  may  be 
honestly  applied  can  never  be  shaken ; 
but  it  would  seem  that  the  natural 
resting-place  of  the  now  well  defined 
tendency,  which  is  emphasized  by  the 
later  cases,  is  at  a  point  where  the  con- 
clusion will  be  that  descriptive  words 
cannot  be  employed  to  effect  a  fraudu- 
lent purpose. 


186 


MILNER  v.  REED. 

327.  The  Delaware  and  Hudson  Canal  Company  v.  Clark. 

January,  1870  ;  December,  1871.  U.  S.  C.  C.  S.  Dt.  of  N.  Y.  —  7  Bl.  C. 
C.  112.  U.  S.  Sup.  Ct.  —  lS  Wallace,  311 ;  5  Am.  L.  T.  135  ;  1  U.S. 
Pat.  Gaz.  279. 

THE  plaintiffs  being  dealers  in  coal,  which  they  raised 
from  the  Lackawanna  Valley,  and  called  by  that  name,  the 
defendant  sold  coal  also  raised  in  that  valley,  but  not  by  the 
plaintiffs,  as  "  Lackawanna  Coal." 

Injunction  to  restrain  the  defendant  from  using  the  word 
"  Lackawanna  "  refused,  although  the  plaintiffs  had  long  ex- 
clusively raised  coal  there  and  used  the  name,  on  the  ground 
that  it  correctly  described  the  origin  of  the  defendant's  coal. 

Per  Strong,  J.  (13  Wall.  323).  "  No  one  can  claim  protection  for 
the  exclusive  use  of  a  trade-mark  or  trade  name  which  would  practi- 
cally give  him  a  monopoly  in  the  sale  of  any  goods  other  than  those 
produced  or  made  by  himself.  If  he  could,  the  public  would  be  in- 
jured rather  than  protected,  for  competition  would  be  destroyed.  Nor 
can  a  generic  name,  or  a  name  merely  descriptive  of  an  article  of 
trade,  of  iis  qualities,  ingredients,  or  characteristics,  be  employed  as 
a  trade-mark,  and  the  exclusive  use  of  it  be  entitled  to  legal  protec- 
tion." 


328.  Milner  v.  Reed. 

February  3,  1870.     Lancaster  Chanc.:   Wickens,  V.  C.  —  Bryce  on  Trade- 
Marks,  90. 

A  SURGEON  resident  in  a  place  called  "  Oldfield  Lane" 
having  acquired  a  considerable  local  reputation  as  "  The  Old- 
field  Lane  Doctor"  the  plaintiff,  who  had  been  his  assistant 
and  afterwards  his  partner,  continued  to  practise  under  the 
same  name  for  some  years  after  the  death  of  the  person  to 
whom  it  was  originally  applied.  The  defendant,  who  had 
come  into  occupation  of  the  premises  formerly  occupied  by 
the  partnership  in  Oldfield  Lane,  began  to  describe  himself 
by  the  name  of  "  The  Oldfield  Lane  Doctor" 

Injunction  granted  to  restrain  the  defendant  from  so  doing. 

187 


WOTHERSPOON  v.  CURRIB 


329.  Wotherspoon  v.  Currie. 

February  25,  July  5,  1870;  April  18,  1872.  Molina,  V.  C.  —  22  L.  T. 
N.  S.  260  ;  18  W.  R.  562.  James,  L.  J.  —  42L.  J.  Ch.  130  ;  23  L. 
T.  N.  S.  443  ;  18  W.  R.  942.  House  of  Lords.  — L.  R.  5  H.  L.  508  ; 
42  L.  J.  Ch.  130  ;  27  L.  T.  N.  S.  393. 

THE  plaintiffs  being  manufacturers  of  "  Grlenfield  Starch" 
carrying  on  business  in  succession  to  the  original  makers,  at 
first  at  Glenfield,  afterwards  at  another  place,  the  defendant 
obtained  possession  of  a  small  plot  of  land  at  Glenfield,  and 
began  to  manufacture  starch  and  to  sell  it  in  packets  on 
which  the  word  "  Grlenfield "  appeared  in  large  and  con- 
spicuous letters. 

Injunction  granted  to  restrain  the  defendant  from  using 
the  word  "  G-lenfield  "  in  connection  with  his  starch,  notwith- 
standing that  his  own  name  had  also  been  placed  on  his 
packets. 

Per  Lord  Hatherley,  C.  (L.  R.  5  H.  L.  517).  "It  has  been 
long  ago  pointed  out  in  decided  cases  that  it  is  not  upon  a  mala 
mem  towards  the  first  purchaser  that  the  decision  of  these  cases 
rests." 

Per  Lord  Chelmsford  (p.  519).  "For  the  purpose  of  establish- 
ing a  case  of  infringement,  it  is  not  necessary  to  show  that  there  has 
been  the  use  of  a  mark  in  all  respects  corresponding  with  that  which 
another  person  has  acquired  an  exclusive  right  to  use,  if  the  resem- 
blance is  such  as  not  only  to  show  an  intention  to  deceive,  but  also 
such  as  to  be  likely  to  make  unwary  purchasers  suppose  that  they 
are  purchasing  the  article  sold  by  the  party  to  whom  the  right  to 
use  the  trade-mark  belongs." 

Per  Lord  Westbury  (p.  522).  "I  have  no  doubt  that  this  case 
comes  within  the  principle  on  which  the  jurisdiction  is  founded  — 
the  principle  being  to  prevent  a  party  from  fraudulently  availing 
himself  of  the  trade-mark  of  another  which  has  already  obtained  cur- 
rency and  value  in  the  market,  by  whatever  means  he  may  devise 
for  the  purpose,  provided  the  means  are  devised  in  order  to  give  him 
a  colorable  title  to  the  use  of  the  word,  and  provided  it  be  shown 
from  the  manner  in  which  he  has  employed  those  means  that  his 

188 


THE  DIXON  CRUCIBLE  COMPANY  V.  GUGGENHEIM. 

object  was  from  the  beginning   to  invade   the  property  of  the  ap- 
pellants." 1 

33O.  Genin  v.  Chadsey. 
New  York.  —  Cited,  2  Breicst.  330;  R.  Cox,  567. 

THE  plaintiff  being  the  proprietor  of  an  oyster  saloon,  over 
the  door  of  which  he  placed  a  sign  bearing  the  words  "The 
Captain's  Live  and  Let  Live  Oyster  and  Dining  Saloon"  the 
defendants  carried  on  the  same  business  next  door,  and  put 
up  a  sign  with  the  words  "  Gr.  W.  Chadsey  $  Co.' 8  Great  East- 
ern Live  and  Let  Live  Dining  Saloon" 

Injunction  granted  to  restrain  the  defendants  from  using 
the  words  "Live  and  Let  Live."  2 


331.  The  Dixon  Crucible  Company  v.  Guggenheim. 

March,  1870.     Phila.   C.  P.  :  Paxson,  /.—  7  Phila.  408;  2  Brews.  321; 
3  Am.  L.  T.  288 ;  R.  Cox,  559. 

THE  plaintiffs  being  makers  of  stove  polish  which  they 
sold  labelled  with  the  words  "Stove  Polish  —  Dixon' s  Pre- 
pared Carburet  of  Iron"  the  defendants  began  to  sell  stove 
polish  labelled  "  J.  C.  Dixon's  Stove  Polish  —  Carburet  of 
Iron." 

Injunction  granted  to  restrain  the  defendants  from  infring- 
ing the  plaintiffs'  rights. 

"  The  property  or  right  to  a  trade-mark  may  pass  by  an  assign- 
ment, or  by  operation  of  law,  to  any  one  who  takes  at  the  same  time 
the  right  to  manufacture  or  sell  the  particular  merchandise  to  which 
the  said  trade-mark  has  been  attached.  As  a  mere  abstract  right, 
having  no  reference  to  any  particular  person  or  property,  it  is  con- 
ceded that  it  cannot  exist,  and  so  cannot  pass  by  an  assignment,  or 
descend  to  a  man's  legal  representative."  * 

1  See  Lee  v.  Haley,  325.  8  See  Williams  v.  Johnson,  150. 

2  See  Howard  v.  Henriques,   108. 

189 


STONEBRAKER  V.  STONEBRAKER. 

332.  McCartney  v.  Garnhart. 
March,  1870.     Missouri  Sup.  Ct.  —  45  Mo.  (4  Post)  593. 

THE  plaintiffs  being  whiskey  manufacturers,  who  sold  their 
whiskey  in  barrels  branded  with  a  device  consisting  of  two 
anchors  and  the  initials  "  iS.  McC."  the  defendant  began  to 
sell  whiskey  in  barrels  branded  with  two  picks,  a  pair  of 
scales,  and  the  words  "  J.  If.  Grarnhart' 's  Old  Bourbon" 

Injunction  to  restrain  the  defendant  from  infringing  the 
plaintiffs'  rights  refused,  on  the  ground  that  the  resemblance 
between  the  two  brands  was  not  sufficiently  close  to  render 
deception  probable,  and  that  no  intention  to  deceive  was 
shown. 

"  To  justify  an  injunction  it  should  at  least  appear  that  the  resem- 
blance between  the  two  brands  is  sufficiently  close  to  raise  the  proba- 
bility of  mistake  on  the  part  of  the  public,  or  design  and  purpose  to 
mislead  and  deceive  on  the  part  of  the  defendant." 


333.  Stonebraker  v.   Stonebraker. 
April,  1870.     Maryland  Ct.  ofApp.  —  3B  Md.  252. 

THE  plaintiff,  Henry  Stonebraker,  having  invented  and 
manufactured  a  series  of  medicines  known  as  "  Stonebraker' s 
Medicines"  the  defendants,  of  whom  two  had  been  in  partner- 
ship with  the  plaintiff,  but  had  covenanted  on  dissolution  not 
to  imitate  his  medicines,  etc.,  and  another  was  the  plaintiff's 
brother,  began  to  use  the  brother's  name,  and  to  manufacture 
and  sell  medicines  as  "  Stonebraker' s  Medicines"  in  some  cases 
introducing  the  plaintiff's  certificates  and  testimonials. 

Injunction  granted  to  restrain  the  defendants  from  imitat- 
ing the  plaintiff's  medicines,  and  selling  medicines  under  the 
same  names,  imitating  the  plaintiff's  trade-marks,  labels,  etc. ; 
and 

Held,  that  the  defendants  must  account  for  profits  made  on 
goods  actually  sold  by  them  with  the  prohibited  marks,  etc., 
but  not  for  goods  manufactured  but  not  sold,  and  not  for 
goods  forming  part  of  the  stock  of  the  former  partnership, 

190 


GILLIS  V.  HALL. 

which  the  former  partners  retained  the  right  to  sell,  under 
the  terms  of  dissolution. 1 


334.  Billet   v.   Carlier. 

June  6,  1870.     N.  Y.  Sup.  Ct.  — Pratt,  J.  —  61  Barb.  S.  C.  435 ;  11  Abb. 

Pr.  N.  S.  186. 

THE  plaintiff  manufacturing  from  pomegranate  juice  a 
syrup  which  he  called  "  Grenadine  "  and  "  Grenade  Syrup" 
the  defendant  began  to  sell  another  syrup  as  "  Grenade 
Syrup." 

Motion  by  the  defendant  to  dissolve  an  injunction  which 
had  been  granted  to  restrain  him  from  selling  a  syrup  under 
that  name  refused,  on  the  ground  that  the  plaintiff  had  ac- 
quired a  right  of  trade-mark  in  the  word  "  Grenade,"  as  ap- 
plied to  syrup,  by  being  the  first  to  adopt  it  in  America,  not- 
withstanding that  the  word  was  an  ordinary  French  one,  signi- 
fying '•'•pomegranate,"  and  that  the  term  "  Grenade  Syrup  " 
was  in  common  use  in  France,  and  notwithstanding  that  the 
defendant  used  the  term  in  combination  with  other  words.2 


335.  Gillis  v.  Hall.    (1.) 

July,  1870.     Phila.  C.  P.:  Paxson,  J.  —  7  Phila.  422 ;  2  Brewster,  342; 
R.  Cox,  580. 

THE  defendant  having  sold  to  the  plaintiff  his  interest  in 
the  firm  of  "  R.  P.  Hall  $•  Co.,"  and  in  the  secret  of  a  certain 
preparation  called  "  Hall's  Vegetable  Sicilian  Hair  Renewer" 
and  in  the  use  of  the  name,  covenanting  not  to  use  his  name 
in  the  manufacture  of  similar  articles,  nor  to  manufacture 
such  articles,  nor  to  impart  the  secret,  subsequently  formed  a 
partnership  with  another  person  under  the  same  name  of  "  R. 
P.  Hall  $  Co."  and  commenced  to  manufacture  and  sell  the 
same  article  under  the  same  name  and  with  a  trade-mark 
imitated  from  the  plaintiff's. 

Injunction  granted  to  restrain  the  defendant  from  making 
1  See  Burgess  \.  Burgess,  117.  2  See  Burnett  v.  Phahn,  279. 

191 


HOVENDEN  V.  LLOYD. 


and  selling  such  preparations,  or  using  his  name  in  connection 
therewith,  or  imitating  the  plaintiff's  labels,  although  liqui- 
dated damages,  to  be  forfeited  in  case  of  breach  of  the  con- 
tract, were  specified  in  the  contract.1 


336.  Choynski  v.  Cohen. 

July,  1870.     Col.  Sup.   CL  —  39  Cal.  501;  2  Amer.  Rep.  476;  R.  Cox, 

593. 

THE  plaintiff's  place  of  business  being  styled  "  The  Anti- 
quarian Book  Store"  the  defendant  began  to  style  his  estab- 
lishment "  The  Antiquarian  Book  and  Variety  Store" 

Injunction  to  restrain  him  from  so  doing  refused,  on  the 
ground  that  the  name  was  merely  descriptive  of  the  particular 
class  of  books  sold,  and  could  not  be  exclusively  appropriated 

by  any  one. 

« 

337.  Hovenden  v.  Lloyd. 

July  20,  1870.     Bacon,  V.  C.  —  18  W.  R.  1132. 

S.  LLOYD  having  invented  a  toilet  preparation  which  he 
termed  "  Lloyd's  Euxesis"  after  his  death  intestate,  in  1854, 
his  son,  A.  S.  Lloyd,  who  had  been  in  his  employ,  continued 
to  make  the  article,  but  without  taking  out  administration  to 
his  father.  A.  S.  Lloyd  died  in  1868,  and  the  plaintiff  was 
the  purchaser  of  the  good-will  of  his  business,  together  with 
what  right  he  had  to  the  trade-mark. 

Suit  for  an  injunction  to  restrain  the  widow  of  A.  S.  Lloyd 
from  manufacturing  the  article  and  using  the  name. 

Held,  that  A.  S.  Lloyd  had  acquired  no  title  to  the  trade- 
mark capable  of  being  enforced,  or  of  being  transferred  to  the 
plaintiff ;  and  further,  that  if  A.  S.  Lloyd  had  had  any  title, 
it  would  have  been  waived  by  his  having  taken  no  proceed- 
ings during  a  period  of  fifteen  months  preceding  his  death, 
for  which  time  the  defendant  had  carried  on  her  business, 
and  that  the  injunction  must  be  refused. 

1  See  Burgess  v.  Burgess,  117. 

192 


CANDEE,  SWAN  &  CO.  V.  DEERE  &  CO. 

338.  Hargreaves  v.   Smith. 
August  8,  1870.     Manchester  Assizes :  Lush,  J. 

THE  plaintiffs  being  the  executors  of  a  bleacher,  dyer,  and 
finisher  of  gray  cloths,  whose  trade-mark  consisted  of  his  arms, 
crest,  and  initials,  with  a  scroll  and  a  border  in  blue,  white, 
and  gold,  the  defendant  began  to  use  a  trade-mark,  consisting 
of  his  own  arms,  crest,  and  initials,  similarly  arranged  and 
colored,  before  the  testator's  death,  and  continued  to  do  so 
afterwards. 

Action  for  damages. 

Held,  at  the  trial,  by  Lush,  J.,  that  the  points  for  the  jury 
were  :  (1.)  whether  the  plaintiffs'  trade-mark  was  a  good  one; 
(2.)  whether  the  plaintiffs'  trade-mark  had  been  copied  ;  (3.) 
whether  the  resemblance,  if  any,  had  been  produced  with  the 
intention  of  diverting  customers  from  the  plaintiffs  to  the 
defendant. 

Verdict  for  the  plaintiffs. 


339.  Candee,  Swan  &  Co.  v.  Deere  &  Co. 

September,  1870.    III.  Sup.  Ct.  —  54  111.  439  ;  5  Amer.  Rep.  125  ;  4  Am. 
L.  T.  266  ;  10  Am.  L.  Reg.  N.  S.  694. 

THE  respondents  (plaintiffs)  being  manufacturers  of  ploughs 
at  Moline,  which  they  stamped  with  the  words  "  John  Deere, 
Moline,  111,"  the  appellants  (defendants)  made  ploughs  at 
the  same  place  and  stamped  them  "  Candee,  Swan  $•  Co., 
Moline,  III" 

On  appeal,  injunction  which  had  been  granted  to  restrain 
the  appellants  (defendants)  from  using  the  word  "  Moline  " 
dissolved,  on  the  ground  that  the  word  was  only  indicative 
of  the  place  of  manufacture,  to  which  all  inhabitants  of  the 
town  had  an  equal  right ;  and 

Held,  that  no  exclusive  right  could  be  claimed  in  the  let- 
ters and  figures  "A.  No.  1,"  "A.  X.  No.  1,"  "  No.  1,"  "  X. 
13  193 


HOLMES   V.  HOLMES,  ETC.,  MANUFACTURING  CO. 

No.  1,"  "  No.  3,"  and  "  B.  No.  1,"  used  to  designate   the 
different  qualities  of  the  ploughs. 

Per  Breese,  J.  (5  Amer.  Rep.  136).  "It  is  the  actual  use  of  the 
trade-mark  affixed  to  the  merchandise  of  the  manufacturer,  and  this 
alone,  which  can  impart  to  it  the  element  of  property.  The  mere 
declaration  of  a  person,  however  long  and  however  extensively  pub- 
lished, that  he  claims  property  in  a  word  as  his  trade-mark,  cannot 
even  tend  to  make  it  his  property." 

P.  141.  "The  law  is  well  settled  that  no  circular,  price  list,  or 
advertisement,  no  matter  how  frequently  repeated,  can  constitute  a 
trade-mark." 1 

34O.  Holmes,  Booth  &  Haydens  v.    The  Holmes, 
Booth  &  Atwood  Manufacturing  Co. 

September,  1870.     Conn.  Sup.  CL  —  37  Conn.  278;  9  Amer.  Rep.  324. 

HOLMES  &  BOOTH  having  been  two  of  the  principal  pro- 
moters of  the  plaintiff  corporation,  established  under  the 
above  name,  left  it  and  set  up  the  defendant  company  under 
a  very  similar  title. 

Injunction  granted  to  restrain  the  defendant  company  from 
using  the  names  of  Holmes  &  Booth. 

Per  Carpenter,  J.  "The  ground  on  which  courts  of  equity 
afford  relief  in  this  class  of  cases  is  the  injury  to  the  party  aggrieved, 
and  the  imposition  upon  the  public,  by  causing  them  to  believe  that 
the  goods  of  one  man  or  firm  are  the  production  of  another.  The 
existence  of  these  consequences  does  not  necessarily  depend  upon 
the  question  whether  fraud  or  an  evil  intent  does  or  does  not  exist. 
The  quo  animo,  therefore,  would  seem  to  be  an  immaterial  inquiry." 

1  The  theory  of  plaintiffs'  case  was  mark.     The  court  held  that  the  word 

that  their  ploughs  had  acquired  rep-  "Moline"  being  geographical,  and  hav- 

utation  and  were  known  and  sold  as  ing  been  used  in  good  faith  by  the  de- 

"  Moline  Ploughs"    or    "  The    Moline  fendants,  no  relief  could  be  granted. 
Plough;"  that  the  term  "Moline"  was,         See  Newman  v.  Alvord,  282. 
therefore,  to  be  regarded  as  their  trade- 

194 


NIXEY  v.  ROFFEY. 

341.  Ex  parte  King. 

September  19,-  1870.     U.  S.  Patent  Office:   Fisher,  Comm. —  U.  S.  Pat. 
Comm.  Decis.  1870,  p.  109. 

APPLICATION  for  a  grant  of  letters  patent  for  a  design  for 
a  trade-mark  refused,  on  the  ground  that,  since  the  U.  S. 
Statute  of  1870,  the  only  proper  statutory  mode  of  obtaining 
the  exclusive  use  of  a  trade-mark  was  by  procuring  its  regis- 
tration under  that  act  as  a  trade-mark,  and  not  by  patenting 
it  as  a  design,  or  otherwise. 


342.  In  re  English. 

November  2,  1870.     U.  S.  Patent  Office:   Ftiher,    Comm.  —  U.  S.  Pat. 
Comm.  Decis.  1870,  p.  142. 

ON  an  application  for  the  registration  of  certain  trade- 
marks on  brooms,  of  which  one  consisted  of  the  words  and 
letters  "  R.  W.  English's  X  Broom,  Buffalo,  N.  T.  Order 
English's  X  Brooms"  and  the  others  were  the  same,  except 
that  the  X  was  chang.ed  into  XX  and  XXX  : 

Held,  (1.)  that  the  fact  that  X  and  XX  had  been  used  as 
descriptive  of  quality  in  the  liquor  trade  did  not  disqualify 
those  symbols  from  being  arbitrarily  adopted  as  trade-marks 
in  an  entirely  different  trade,  and  that  the  trade-marks  must 
be  admitted  to  registration  ;  (2.)  that  a  separate  application 
must  be  made  for  the  registration  of  each  separate  variation 
in  the  label  by  the  addition  of  an  X,  the  X,  XX,  etc.,  being 
in  each  case  a  mere  arbitrary  symbol.1 


342.  Nixey  v.  Roffey. 
November  14,  1870.     Malins,  V.  C.—  W.  N.  1870,  p.  227. 

THE  plaintiff  being  a  manufacturer  of  black  lead,  which 
he  sold  under  special  labels,  on  which  he  was  described  as 
" Manufacturer  and  Patentee"  though  he  had  taken  out  no 

1  See  Lawrence,  Sf-c.  Co.  v.  Lowell  Hosiery  Mills,  676. 

195 


CLOWES  V.  HOGG. 

patent  for  the  article  in  question,  the  defendant  sold  other 
black  lead  under  similar  labels. 

Suit  for  an  injunction  to  restrain  the  defendant'from  imitat- 
ing the  plaintiff's  labels. 

An  injunction  having  been  granted  on  motion  by  the  plain- 
tiff, and  the  defendant  having  since  ceased  to  use  the  labels, 
and  sold  his  business  : 

Held,  on  motion  for  decree,  that  the  plaintiff's  use  of  the 
words  "  Manufacturer  and  Patentee  "  was  equivalent  to  his 
describing  his  article  as  "patent"  and  that  this  being  in- 
correct, the  bill  must  be  dismissed  without  costs.1 


344.  Lazenby  v.  White.     (1.) 

November  18,  1870  ;  January  16,  1871.  Lord  Romilly,  M.  R.  —  Cited  L. 
R.  11  Eq.  448;  49  L.  J.  Ch.  576;  24  L.  T.  N.  S.  380  ;  19  W.  R.  595  ; 
Seton,  4th  ed.  237.  James  and  Mellish,  L.  JJ.  —  41  L.  J.  Ch.  354. 

THE  plaintiffs  being  the  successors  in  business  of  the  in- 
ventor of  "  Harvey's  Sauce"  that  name  having  become  open 
to  the  use  of  all  manufacturers  of  the  sauce,  the  defendant 
began  to  sell  a  sauce  under  the  name  of  "  The  Original  Lazen- 
by's  Harvey's  Sauce."" 

Injunction  granted  to  restrain  the  defendant  from  so  doing ; 
and 

Held,  that  a  defence  that  the  plaintiffs  were  disentitled  by 
reason  of  their  own  delay  failed. 


345.    Clowes  v.  Hogg. 

December  17,  1870;  February  17,  1871.  Matins,  V.  C.—W.  N.  1870,  p. 
268  ;  L.  J.  Notes  of  Cases,  1870,  p.  267.  James  and  Mellish,  L.  JJ.  — 
W.N.  1871,^.40. 

THE  plaintiffs  being  the  proprietors  of  a  magazine  called 
London  Society,  the  defendant,  who  had  formerly  owned  the 
magazine,  and  had,  on  mortgaging  it  to  another  firm,  cove- 
nanted to  do  nothing  to  injure  it,  began  to  publish  a  maga- 
1  See  Pidding  v.  How,  60. 

196 


GRAHAM  V.  PLATE. 

zine  which  he  called  English  Society,  in  a  cover  calculated  to 
induce  the  belief  that  it  was  a  substitute  for  or  continuation 
of  London  Society. 

On  motion  by  the  plaintiffs,  injunction  granted  to  restrain 
the  defendant  from  so  doing. 

On  appeal,  the  defendant  having  in  the  mean  time  adopted 
a  new  style  of  cover  to  which  the  plaintiffs  did  not  object : 
Held,  that  the  injunction  must  be  dissolved,  the  defendant 
undertaking  to  use  the  new  cover  until  the  hearing.1 

346.   Lazenby  v.  White.     (2.) 
December  22,  1870.     James,  L.  J.—  L.  R.  6  Ch.  89;   19  W.  R.  291. 

ON  motion  by  the  defendant,  his  appeal  against  the  in- 
junction which  had  been  granted  to  restrain  him  from  selling 
his  sauce  under  the  name  of  "  The  Original  Lazenby's  Har- 
vey's Sauce"  advanced  to  the  head  of  the  list  of  appeals  for 
the  next  term,  on  the  ground  of  the  irreparable  damage  which 
would  be  occasioned  to  the  defendant  by  the  continuance  of 
the  injunction. 

347.    Graham  v.  Plate. 

January,  1871.     Col.  Sup.  Ct.  —  40  Cal.  593  ;  6  Amer.  Rep.  639;  4  Am. 

L.  T.  75. 

IN  an  action  to  recover  damages  for  an  infringement  by  the 
defendant  of  the  trade-mark  of  Henry  Derringer,  of  whose 
estate  the  plaintiff  was  administrator,  the  whole  profits  made 
by  the  defendant  by  the  sale  of  the  spuriously  marked  goods 
were  awarded  as  damages. 

Held,  on  appeal,  that  the  damages  were  not  excessive. 

Per  Crockett,  J.  "  Every  consideration  of  reason,  justice,  and 
sound  policy  demands  that  one  who  fraudulently  uses  the  trade-mark 
of  another  should  not  be  allowed  to  shield  himself  from  liability  for 
the  profit  he  has  made  by  the  use  of  the  trade-mark,  on  the  plea  that 
it  is  impossible  to  determine  how  much  of  the  profit  is  due  to  the 
trade-mark,  and  how  much  to  the  intrinsic  value  of  the  commodity. 
1  See  Hogg  v.  Kirby,  10. 

197 


ELLIS  V.  ZEILEN  &  CO. 

The  fact  that  it  is  impossible  to  apportion  the  profit  renders  it  just 
that  he  should  lose  the  whole."  1 


348.  Ellis  v.  Zeilen  &  Co. 
January,  1871.     Georgia  Sup.  Ct.  —  42  Ga.  91. 

THE  plaintiffs  (defendants  in  error)  having  purchased  a 
medicine  called  "  Dr.  Simmons'  Liver  Regulator  or  Medi- 
cine" the  defendants  (plaintiffs  in  error)  began  to  sell  a  med- 
icine of  their  own  as  "  Dr.  A.  Q.  Simmons'  Genuine  Liver 
Medicine" 

Suit  for  an  injunction  to  restrain  the  defendants  from  using 
similar  packages  and  wrappers  to  the  plaintiffs'. 

Demurrer  by  the  defendants  overruled,  on  the  ground  that, 
although  the  trade-marks  did  not  appear  so  similar  as  to  be 
likely  to  deceive,  it  must  be  assumed  from  the  pleadings,  for 
the  purpose  of  the  demurrer,  that  the  defendants  had  acted 
with  a  view  "to  take  advantage  of  the  reputation"  of  the 
plaintiffs  ;  and 

Held,  that  another  ground  of  demurrer,  that  the  plaintiffs' 
medicine  was  a  quack  remedy  and  a  deceit  upon  the  public, 
failed,  on  the  principle  that  in  such  cases  the  court  would 
only  adjudicate  between  the  conflicting  claims  of  the  parties, 
and  not  with  a  view  to  the  guardianship  of  the  public  with 
respect  to  the  qualities  of  nostrums,  except  where  injury  to 
the  public  health  or  morals  was  to  be  apprehended. 

1  There  is  a  conflict  between  the  cases  vided  court,  in  which  the  latter  rule 

as  to  the  proper  measure  of  damage  for  was  applied,   although   the   mark   in- 

the  infringement  of  a  trade-mark.     It  volved  was  of  a  strictly  technical  nat- 

has  been  held  in  many  instances  that  ure. 

the  profits  of  the  defendant  is  the  true  In  contemplation  of  law  the  effect  of 

measure,  and  in  others  that  the  profits  the  defendant's  course  is  to  divert  the 

which  would  have  been  realized  by  the  plaintiff's  trade.    The  theory   is  that 

plaintiff,  had  he  sold  the  quantity  of  each  package  bearing  the  fraudulent 

goods  shown  to  have  been  sold  by  the  mark   has   been   bought  as  and  for  a 

defendant,  is  the  proper  estimate  of  his  package    of   plaintiff's    goods.     Why, 

loss.     Perhaps  the  most  authoritative  then,   is  not   the  measure  of  damage 

decision   on    the   subject    is    Faber   v.  what  the  plaintiff  would  have  made  had 

Hovey,  481,  decided    by   the   General  he  sold  what  constructively  he  would 

Term  of  the  Supreme  Court  of  New  have   sold  had  he  been   permitted   to 

York,  and  affirmed  on  appeal  by  a  di-  enjoy  his  legal  right  ? 

198 


SHIPWRIGHT  V.  CLEMENTS. 

349.  R.  v.  Ardley. 

January  31,  1871.     C.  C.  R.  —L.  R.  1  C.  C.  R.  301;  12  Cox,  23  ;  40  L.J. 
M.  C.  85;  24  L.  T.  N.  S.  193  ;  19  W.  R.  478. 

ON  an  indictment  for  obtaining  money  by  false  pretences, 
the  prisoner  having  induced  the  prosecutor  to  purchase  a  gold 
chain  spuriously  stamped  "  15  ct."  on  every  link,  in  imitation 
of  the  hall-mark,  on  a  representation  that  it  was  made  of  15 
carat  gold,  and  that  the  mark  was  genuine : 

Held,  that  the  conviction  was  right  and  must  be  affirmed, 
on  the  ground  that  the  prisoner's  statement  was  not  mere  ex- 
aggerated commendation  of  the  article  of  which  he  wished  to 
dispose,  but  a  deliberate  misstatement  of  what  was  not  a  mat- 
ter of  opinion,  but  a  matter  of  fact. 


35O.  Shipwright  v.  Clements. 
February  20,  1871.     Malins,  V.  C.  — 19  W.  R.  599. 

THE  defendant,  having  been  in  partnership  with  the  plain- 
tiff as  perfumers,  assigned  to  the  plaintiff,  on  the  dissolution 
of  the  partnership,  all  his  interest  in  the  partnership  prem- 
ises and  effects,  without  specifically  referring  to  the  good-will 
or  trade-marks,  and  covenanted  not  to  interfere  with  the 
plaintiff,  but  he  nevertheless  subsequently  represented  that 
the  old  business  had  been  removed  to  his  new  premises,  and 
sold  a  perfume  called  "  The  Zingari  Bouquet "  under  the 
name  and  mark  which  the  partnership  had  used  for  it. 

Injunction  granted  to  restrain  the  defendant  from  infring- 
ing the  plaintiff's  rights,  but  on  account  of  the  smallness  of 
the  amount  no  account  given. 

"  The  sale  of  a  business  is  a  sale  of  the  good-will.  It  is  not  neces- 
sary that  the  word  '  good-will '  should  be  mentioned.  The  defendant 

sold  the  business,  and  with  it  everything  producing  profit In 

the  sale  of  a  business  a  trade-mark  passes,  whether  specially  men- 
tioned or  not." 

199 


RODGERS  V.  PHILP. 

351.   Cocks  v.  Chandler. 

March  3,  1871.     Lord  Romilly,  M.  R.  —  L.  R.  11  Eq.  446;  40  L.  J.  Ch. 
575 ;   24  L.  T.  N.  S.  379  ;  19  W.  R.  593. 

THE  plaintiff  being  the  successor  in  business  of  the  inventor 
of  "  Reading  Sauce"  the  defendant  began  to  sell  a  sauce 
under  the  name  of  "  The  Original  Reading  Sauce." 

Injunction  granted  to  restrain  the  defendant  from  so  doing. 

"  Where  there  are  a  great  number  of  persons  who  produce  the  same 
article, '  original '  means  that  the  article  so  called  is  that  made  by  the 
first  inventor.  That  is  the  meaning  of  the  word  'original'  which 
the  Court  of  Chancery  has  always  recognized."  * 


352.  Rodgers  v.  Philp. 
1871.     Columbia  Sup.  Ct.:   Wylie,  J.—  l  U.  S.  Pat.  Gaz.  29. 

THE  plaintiffs  being  a  firm  of  Sheffield  cutlers,  who  stamped 
their  cutlery  with  the  name  '•'•Rodgers"  or  '•'•Rodgers  $  Sons" 
or  "«7.  Rodgers  $  Sons"  together  with  a  star  and  Maltese 
cross,  the  defendants  sold  other  cutlery  marked  with  '•'•Rogers 
$•  Son"  and  the  same  symbols,  alleging  that  such  cutlery 
had  been  manufactured  by  a  German  firm,  and  sold,  so 
marked,  for  twenty-five  years. 

On  motion  by  the  plaintiffs  for  an  injunction  to  restrain 
the  defendants  from  so  doing : 

Held,  (1.)  that  the  marks  on  the  defendants'  goods,  though 
not  identical  with  those  on  the  plaintiffs',  constituted  an  in- 
fringement of  the  plaintiffs'  rights ;  (2.)  that  a  license  from 
the  King  of  Prussia  to  the  German  manufacturers  to  use  the 
fraudulent  marks,  if  it  existed,  could  be  no  defence  ;  (3.)  that 
the  plaintiffs  were  not  disentitled  by  reason  of  not  having  reg- 
istered their  trade-marks  in  America,  under  the  U.  S.  Statute 
of  1870,  since  registration  was  not  made  obligatory ;  (4.)  but 
that  the  plaintiffs  were  disentitled  to  an  injunction  at  all 
events  as  regarded  innocent  purchasers  of  goods  spuriously 
1  See  Brown  v.  Freeman,  230. 

200 


CONGRESS  SPRING  CO.  V.  CONGRESS  SPRING  CO. 

marked,  by  a  delay  of  twenty-five  years  in  arresting  the  in- 
fringement, and  that  the  motion  must  therefore  be  refused.1 


353.  Gillis  v.  Hall.    (2.) 
1871.    PMla.  C.P.:  Paxson,  J.  —  8  Phila.  231;  3  Brews.  509;  R.  Cox,  596. 

THE  defendant,  having  been  restrained  by  injunction  from 
using  the  names  "  Hall,"  "  R.  P.  Hall"  etc.,  in  connection 
with  a  preparation  called  "  Hall's  Vegetable  Sicilian  Hair  Re- 
newer"  sold  an  article  which  he  styled  "  R.  P.  Hall's  im- 
proved preparation  for  the  hair,"  and  enclosed  it  in  wrappers 
containing  a  statement  that  the  preparation  was  entirely  dif- 
ferent from  "HalVs  Vegetable  Sicilian  Hair  Renewer"  but 
was  compounded  by  the  same  inventor,  R.  P.  Hall. 

Attachment  issued  against  the  defendant  for  contempt. 


354.  The  Congress  and  Empire  Spring  Co.  v.  The  High 
Rock  Congress  Spring  Co. 

April,  1871.  AT.  Y.  Sup.  Ct.  —  57  Barb.  526;  R.  Cox,  599.  N.  Y.  Ct. 
of  App.  —  45  N.  Y.  (6  Hand)  291  ;  10  466.  Pr.  N.  S.  348;  6  Amer. 
Rep.  82 ;  4  Am.  L.  T.  168;  R.  Cox,  624. 

THE  plaintiffs,  being  the  purchasers  of  the  "  Congress 
Spring "  at  Saratoga,  continued,  as  their  predecessors  had 
long  done,  to  sell  the  medicinal  water  from  the  spring  as 
"  Congress  Water,"  and  in  bottles  and  cases  so  labelled.  The 
defendants  began  to  use  the  name  "  Congress  "  in  their  cor- 
porate name  and  in  connection  with  their  water  from  another 
spring. 

On  appeal  from  an  order  dissolving  an  injunction  which 
had  been  granted,  on  motion  by  the  plaintiffs,  to  restrain  the 
defendants  from  so  doing : 

Held,  (1.)  that  the  exclusive  owner  of  a  natural  spring  had 
a  right  to  designate  the  water  of  the  spring  by  a  trade-mark 
exclusively  his  own  ;  (2.)  that  the  purchase  of  the  spring 

1  Upon  a  hearing  on  the  merits,  an  injunction  was  granted.  See  McLean  v. 
Fleming,  580. 

201 


FABER  V.  D'UTASSEY. 

conveyed  to  the  plaintiffs  the  right  to  the  name  and  mark 
which  their  predecessors  had  used ;  and  therefore  (3.)  that  a 
new  trial  must  be  granted. 

Per  Folger,  J.  (R.  Cox,  626).  "  It  is  held  that  the  right  of  prop- 
erty in  a  trade-mark  can  be  said  to  exist  only,  and  can  be  tested  only, 
by  its  violation.  But  its  violation  is  when  one  adopts  or  imitates,  and 
applies  to  an  article  of  his  manufacture,  the  name  or  mark  previously 
used  by  another  as  a  designation  for  his  production.  The  wrong 
done  is  the  sale  by  the  first  of  his  goods  as  and  for  the  goods  of  the 
last.  The  violation  and  the  wrong  are  the  same,  whether  the  com- 
modity is  one  which  the  hand  of  man  has  made,  or  which  nature  has 
put  into  the  hand  of  man,  —  certainly  so,  if  into  the  hand  of  but  one 
man  has  it  been  put.  It  is  a  matter  of  property,  and  the  profitable 
use  of  property." 

P.  630.  "  A  property  in  trade-mark  may  be  obtained  by  transfer 
from  him  who  has  made  the  primary  acquisition,  though  it  is  essential 
that  the  transferee  should  be  possessed  of  the  right  either  to  manu- 
facture or  sell  the  merchandise  to  which  the  trade-mark  has  been 
attached.  And  it  may  also  pass  by  operation  of  law  to  any  one  who 
at  the  same  time  takes  that  right." 


355.  Faber  v.  D'Utassey. 
April,  1871.     N.  Y.  Super.  Ct.: Brady,  J.  —11  Abb.  Pr.  N.  S.  399. 

ACTION  for  damages  for  an  infringement  by  the  defendants 
of  the  plaintiff's  trade-mark. 

On  motion  for  'judgment  against  one  of  the  defendants,  on 
his  answer,  by  which  he  denied  any  knowledge  of  the  plaintiff's 
ownership,  or  any  intention  to  do  wrong,  and  alleged  that  only 
a  single  sale  of  the  article  wrongly  marked  had  occurred,  and 
that  to  the  plaintiff  or  his  agent  : 

ffeld,  that  such  answer  was  not  frivolous,  since,  even  if  the 
statements  made  afforded  no  defence,  they  were  at  all  events 
important  on  the  question  of  damages,  and  that  the  motion 
must  be  refused. 

202 


CARVER  V.  PINTO  LEITB. 

356.  Carver  v.  Pinto  Leite. 

April  15,  November  21,  1871.  Lancaster  Chanc. :  Wickens,  V.  C.  —  L. 
R.  1  C'A.92;  41  L.  J.  Ch.  93;  25  L.  T.  N.  S.  724;  20  W.  R.  135. 
James  and  Mellish,  L.  JJ.  —  L.  R.  7  Ch.  90;  41  L.  J.  Ch.  92;  25  L.  T. 
N.  S.  722;  20  W.  R.  134. 

THE  defendants,  being  commission  agents,  exported  to 
Portugal  cotton  goods  having  the  plaintiffs'  trade-marks  im- 
pressed upon  them. 

Suit  for  an  injunction  to  restrain  the  defendants  from  so 
doing.  An  order  having  been  made  for  the  production  of 
documents  by  the  defendants,  the  defendants  sealed  up  parts 
of  various  books  and  documents,  and  objected  to  disclose  them. 
Held,  on  appeal,  that  they  were  not  bound  to  disclose  the 
names  of  their  customers,  or  the  prices  at  which  the  goods 
were  bought  or  sold  by  them,  or  the  names  or  addresses  of 
any  persons  to  or  from  whom  any  letters  produced  were  writ- 
ten or  received  (with  a  specified  exception)  ;  but  that  they 
must  disclose  the  places  to  which  they  exported  the  marked 
goods,  the  names  and  addresses  of  the  writers  or  recipients  of 
the  excepted  letters,  the  marks  in  connection  with  which  the 
alleged  spurious  marks  had  been  used,  and  the  directions 
given  to  the  defendants  with  respect  to  those  marks. 

Per  James,  L.  J.  "  In  such  cases  it  is  important  to  consider 
whether  the  discovery  is  material  for  the  purpose  of  enabling  the 
plaintiff  to  establish  his  case  at  the  hearing,  or  material  only  for  the 
subsequent  purposes  of  the  suit,  in  case  the  plaintiff  should  succeed. 
I  am  not  at  all  disposed  to  grant  discovery  when  I  am  satisfied  that 
it  is  likely  to  be  injurious  to  the  defendant,  and  am  not  satisfied  that 
there  is  any  real  prospect  of  its  being  of  material  service  to  the  plain- 
tiff at  the  hearing." 

203  * 


IN  RE  ROBERTS. 


357.  In  re  Hauthaway.    (1.) 

April   24,    1871.     U.    S.    Patent   Office:   Leggett,    Comm.  —  U.  S.   Pat. 
Comm.  Decis.  1871,  p.  97. 

APPLICATION  to  register  the  words  "  Beeswax  Oil "  as  a 
trade-mark  refused,  on  the  ground  that  the  words  were  purely 
descriptive  of  the  substance  and  qualities  of  the  article. 


358.  In  re  Porter  Blanchard's  Sons. 

April  24,1871.      U.    S.   Patent   Office:  Leggett,  Comm.  —  U.   S.  Pat. 
Comm.  Decis.  1871, p.  97. 

THE  words  "  The  Blanchard  Churn"  admitted  to  regis- 
tration as  a  trade-mark  on  churns,  on  the  ground  that  such  a 
phrase  was  capable  of  constituting  a  good  trade-mark  pre- 
viously to  the  U.  S.  Statute  of  1870,  and  that  the  phrase  was 
also  not  obnoxious  to  the  clause  in  that  statute  by  which  "  the 
name  of  a  person,  firm,  or  corporation  only,  unaccompanied 
by  a  mark  sufficient  to  distinguish  it  from  the  same  name 
when  used  by  other  persons,"  was  refused  registration,  since 
other  words  were  coupled  with  the  name. 


359.  In  re  Roberts.    (1.) 

April   24,  1871.     U.    S.   Patent    Office:   Leggett,   Comm.  —  U.   S.   Pat. 
Comm.  Decis.  1871,  p.  113. 

THE  words,  "  A  luxury.  R.  J.  Roberts'  Razor-steel  Scis- 
sors. The  best  in  the  world.  The  best  is  the  cheapest.  For 
sale  here,"  admitted  to  registration  as  a  trade-mark. 


36O.  In  re  Roberts.     (2.) 

April  25,  1871.     U.  S.  Patent  Office:  Leggett,  Comm.—  U.  S.  Pat.  Comm. 
Decis.  1871,  p.  100. 

THE  words,  "  An  exquisite  pleasure  to  shave  with  R.  J. 
Roberts'  Diamond-edged  Razors,"  admitted  to  registration  as 
a  trade-mark. 

204 


GRAY  f.  KOCH. 


361.  In  re  Roberts.     (3.) 

April  25,  1871.     U.  S.  Patent  Office:  Leggett,  Comm.  —  U.  S.  Pat.Comm. 
Decis.  1871,  ;>.  101. 

THE  words  "  R.  J.  Roberts'  Diamond-edge  Razor.     Every 
razor  warranted,"  admitted  to  registration  as  a  trade-mark. 


362.  In  re   Roberts.     (4.) 

May  17,  1871.    U.  S.  Patent  Office:  Leggett,  Comm.  —  U.  S.  Pat.  Comm. 
Decis.  1871,  p.  100. 

APPLICATION  for  the  registration  of  the  words  "  Razor- 
steel  "  as  a  trade-mark,  in  respect  of  cutlery,  refused,  on  the 
ground  that  the  words  were  purely  descriptive  of  the  sub- 
stance and  qualities  of  the  article. 

363.  Gray  v.  Koch. 
1871.     Michigan  C.  C :  Sutherland,  J.—  2  Mich.  N.  P.  119. 

THE  plaintiff  having  begun  to  style  his  establishment  for 
the  sale  of  ready-made  clothes  "The  Mammoth  Wardrobe," 
and  having  placed  those  words  over  his  door,  and  advertised 
them,  but  always  in  connection  with  'his  name  and  address, 
the  defendant,  who  kept  an  establishment  next  door  to  the 
plaintiff's,  placed  the  same  words  over  his  shop. 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the  de- 
fendant from  allowing  those  words  to  remain  refused,  on  the 
ground  that  the  words  in  question  were  descriptive  of  an  estab- 
lishment of  the  kind,  and  were  truthfully  used  by  the  defend- 
ant ;  and  that,  further,  the  different  names  used  in  connection 
with  those  words  would  probably  suffice  to  prevent  decep- 
tion. 

"  The  plaintiff  has  no  right  to  appropriate  a  sign  or  symbol  which, 
from  the  nature  of  the  fact  it  is  meant  to  signify,  others  may  employ 
with  equal  truth  for  the  same  purpose.  Names  having  a  definite  and 
established  meaning  in  the  language,  and  which  do  not  indicate 
ownership  or  origin,  or  something  equivalent,  cannot  be  appropriated 

205 


GARDNER  V.  BAILEY. 


by  one  so  as  to  exclude  a  similar  use  by  others.  No  property  can 
be  acquired  in  words  or  marks  which  do  not  denote  the  goods  or  prop- 
erty, or  peculiar  place  of  business  of  a  person." l 


364.  The  Alleghany  Fertilizer  Co.  v.  Woodside. 
1871.      U.  S.  C.  C.  Dt.  ofMd.:  Giles,  J.  —  l  Hughes,  115. 

THE  plaintiff  company  manufacturing,  at  Boston,  an  agri- 
cultural compost,  under  the  name  of  "  Eureka  Ammoniated 
Bone  Superphosphate  of  Lime,"  the  defendants,  a  Baltimore 
firm,  who  had  been  the  plaintiffs'  agents,  began  to  sell  an- 
other article  as  "Baltimore  'Eureka '  Ammoniated  Bone  Super- 
phosphate of  Lime" 

Injunction  granted  to  restrain  the  defendants  from  infring- 
ing the  plaintiffs'  rights,  on  the  ground  that  the  word  "Eu- 
reka "  was  a  valid  trade-mark,  though  the  remaining  descrip- 
tive words  could  not  be  exclusively  appropriated. 

"  The  natural  or  proper  designation  of  an  article  can  never  become 
a  trade-mark,  because  anybody  making  the  article  has  a  right  to  call 
it  by  its  proper  name.  But  a  purely  arbitrary  or  fanciful  appellation, 
for  the  first  time  used  to  distinguish  an  article  to  which  it  has  no 
natural  or  necessary  relation,  does,  by  virtue  of  that  very  appropria- 
tion and  subsequent  use,  become  a  trade-mark." 


365.  Gardner  v.  Bailey. 
1871.     U.  S.  C.  C.  Dt.  ofPenn.  —  Codd.  Dig.  131. 

THE  plaintiffs  being  owners  of  certain  mills  called  "  The 
Stark  Mills"  and  manufacturers  there  of  seamless  bags,  on 
which  they  placed  the  word  "  Stark  "  over  a  semicircular 
arch,  with  the  letter  "A"  beneath,  the  defendants  made  and 
sold  similar  goods,  similarly  marked,  except  that  they  sub- 
stituted the  word  "  Star  "  for  "  Stark" 

Injunction  granted  to  restrain  the  defendants  from  infring- 
ing the  plaintiffs'  rights. 

1  See  Howard  v.  Henriques,  108. 

206 


SOHL  V.  GEISENDORF. 

366.  Hostetter  v.  Vowinkle. 
1871.     U.  S.  C.  C.  Dt,  of  Neb. :  Dillon  and  Dundy,  JJ.  —  1  Dill.  329. 

THE  plaintiffs  being  manufacturers  of  "  Hostetter's  Cele- 
brated Stomach  Bitters,"  which  they  sold  in  bottles  labelled 
with  that  name,  directions  for  use,  a  device  of  St.  George  and 
the  Dragon,  a  likeness  of  the  inventor,  and  a  fac-simile  signa- 
ture "  Hostetter  $•  Smith"  the  defendants  began  to  sell  other 
bitters  under  the  plaintiffs'  label  without  alteration,  but  after- 
wards changed  "  Hostetter  "  to  "  Hohteter"  and  "  Hostetter  £ 
Smith"  to  "  Hohteter  £  Smyte" 

Injunction  granted  to  restrain  the  defendants  from  infring- 
ing the  plaintiffs'  rights,  and  damages  assessed  at  the  amount 
of  profits  which  the  plaintiffs  would  have  made,  if  they  had 
sold  the  same  quantity  of  their  cordial  as  the  defendants  had 
sold  of  theirs  under  the  spurious  label. 


367.    Sohl  v.  Geisendorf. 
1871.     Indianapolis  Super.  Ct.:  Rand,  J.—  l  Wilson  (2nd.),  60. 

THE  plaintiffs  being  flour  dealers,  the  defendants  sold  flour 
under  similar  trade-marks. 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendants  from  infringing  the  plaintiffs'  rights  ;  and 

Held,  (1.)  that  the  fact  that  the  plaintiffs  had  purchased 
part  of  their  trade-mark  and  invented  the  rest  did  not  inter- 
fere with  their  exclusive  right ;  (2.)  that  an  abandonment  of 
their  mark  by  the  plaintiffs  was  not  proved  by  the  fact  that 
some  isolated  features  of  their  mark  had  been  used  by  others  ; 
(3.)  that  the  fact  that  the  mark  to  some  extent  indicated 
quality  did  not  disentitle  the  plaintiffs ;  (4.)  that  the  defend- 
ants could  derive  no  title  under  a  sale  from  one  of  the  persons 
who  had  previously  sold  to  the  plaintiffs. 

"  If  the  two  marks  were  seen  at  different  times  or  places,  a  major- 
ity of  purchasers  would  not  distinguish  the  oue  from  the  other,  unless 
their  attention  was  specially  called  to  the  difference.  If  such  be  the 

207 


UPMANN  V.  ELKAN. 

case,  the  law  is  well  settled  that  the  defendants'  trade-mark  is  an 
infringement  of  the  plaintiffs',  even  if  the  marks,  side  by  side,  would 
not  mislead." 


368.    Reeves  v.  Denicke. 

June,  1871.     N.  Y.  Super.  Ct. :  Monell,  J.  —  12  Abb.  Pr.  N.  S.  92. 

THE  plaintiffs  trading  as  "  E.  H.  Reeves  $•  Co.,"  the  princi- 
pal partner  being  "  E.  H.  Reeves"  the  defendants,  who  had 
formerly  been  in  partnership  with  E.  H.  Reeves,  as  "  E.  H. 
Reeves  $  (70.,"  and  to  whom  E.  H.  Reeves  had  assigned  his 
interest  in  the  property  of  that  partnership,  traded  under 
the  name  of  "  Robert  C.  Reeves,  successor  to  E.  H.  Reeves 
$  Co." 

Injunction  granted  and  continued  to  restrain  the  defend- 
ants from  continuing  to  use  the  name  "  E.  H.  Reeves  $•  (70.," 
even  in  that  combination. 


369.  Upmann  v.  Blkan. 

June  5,  December  5,  1871.  Lord  Romilly,  M.  R.  —  L.  R.  12  Eq.  140  ; 
40  L.  J.  Ch.  475;  24  L.  T.  N.  S.  896  ;  19  W.  R.  867.  Lord  Hather- 
ley,  C.  —  L.  R.  7  Ch.  130  ;  41  L.  J.  Ch.  246  ;  25  L.  T.  N.  S.  813  ;  20 
W.  R.  181. 

THE  plaintiffs,  being  cigar  manufacturers  in  Cuba,  discov- 
ered that  boxes  of  spurious  cigars,  bearing  their  marks,  had 
arrived  in  the  St.  Katharine  Docks,  and  were  entered  in  the 
names  of  the  defendants,  Messrs.  Elkan,  forwarding  agents. 

Suit  for  an  injunction  to  restrain  those  defendants  from 
dealing  with  the  boxes  of  cigars  in  question,  and  from  in- 
fringing their  trade-marks. 

Held,  (1.)  that  the  defendants,  Messrs.  Elkan,  were  not 
protected  from  the  injunction  by  the  fact  that  they  did  not 
deal  in  the  goods,  but  only  acted  as  forwarding  agents ;  (2.) 
that,  on  their  undertaking  to  give  immediate  notice  of  fresh 
consignments  of  marked  cigars,  they  should  not  have  to  pay 
the  plaintiffs'  costs,  since  they  had  offered  to  give  what  infor- 
mation they  could,  had  not  participated  in  the  fraud,  and  had 

208 


CONDENSED  MILK  CO.  V.  CONDENSED  MILK  CO. 

submitted  to  act  as  the  court  should  direct ;  (3.)  that  they 
were  not  entitled  to  receive  their  costs  from  the  plaintiffs,  not 
having  submitted  unconditionally  ;  (4.)  that  innocent  con- 
signees of  the  goods  spuriously  marked  were  entitled  to  the 
costs  occasioned  by  their  being  made  parties  to  the  suit ;  (5.) 
that  those  consignees  must  pay  their  own  costs  of  the  appeal, 
having  appeared,  though  informed  that  no  alteration  in  the 
order  as  affecting  them  would  be  asked  ;  (6.J  that  the  Dock 
Company  who  held  the  goods  in  the  name  of  Messrs.  Elkan 
were  entitled  to  their  costs ;  (7.)  that  the  consignors  should 
be  at  liberty  to  intervene,  and  that,  if  they  did  not  do  so, 
the  spurious  marks  should  be  erased,  and  the  plaintiffs  should 
have  a  lien  on  the  cigars  for  their  costs  and  the  costs  of  the 
Dock  Company. 

Per  M.  R.  "  It  is  his  duty  (i.  e.  the  duty  of  the  person  in  whose 
name  the  Dock  Company  hold  the  goods  spuriously  marked)  at  once 
to  give  all  the  information  required,  and  to  undertake  that  the  goods 
shall  not  be  removed  or  dealt  with  until  the  spurious  brand  has  been 
removed,  and  to  offer  to  give  all  facilities  to  the  person  injured  for 
that  purpose.  If,  after  that,  the  person  injured  files  a  bill,  though  he 
will  be  entitled  to  all  that  he  asks  in  the  shape  of  relief,  as  he  might 
have  got  it  all  without  suit,  he  will  not  get  from  such  defendants  the 
costs  of  the  suit,  and  he  may  have  to  pay  them.  I  do  not  mean  by 
this  to  lay  down  that  the  plaintiff —  by  which  I  mean  the  person 
whose  trade-mark  is  fraudulently  imitated  —  may  not  file  a  bill  with- 
out making  any  inquiry  at  all." 


370.  The  Anglo-Swiss  Condensed  Milk  Co.  v.  The  Swiss 
Condensed  Milk  Co. 

July  6,  1871.    Malins,  V.  C.—  W.  N.  1871,^.  163;  L.  J.  Notes  of  Cases, 

1871,  p.  154. 

THE  plaintiffs  selling  their  condensed  milk  in  tins  bearing 
labels  with  the  figure  of  a  milk-maid,  with  a  medal  on  either 
side,  the  defendants  began  to  sell  milk  in  tins  labelled  with 
the  figure  of  a  milkman,  with  the  arms  of  Switzerland  in  a 
medallion  on  either  side,  and  having  other  particulars  imitated 
from  the  plaintiffs'  labels. 

14  209 


MOORMAN  V.  HOGE. 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendants  from  infringing  the  plaintiffs'  rights ;  but  the 
plaintiffs  not  having  taken  any  proceedings  on  hearing  of  the 
arrival  of  the  first  small  consignment,  but  having  waited  for 
the  arrival  of  a  larger  quantity  before  doing  so,  the  injunc- 
tion not  to  extend  to  the  milk  already  arrived  and  warehoused 
in  London. 

"  It  is  not  necessary,  in  order  to  enable  the  court  to  interfere,  that 
there  shall  be  absolute  identity  ;  but  there  certainly  is  so  close  a  re- 
semblance between  the  two  as  to  deceive  an  ordinary  purchaser." 


371.  In  re  The  Dutcher  Temple   Co. 

September  21,  1871.     U.  S.  Patent  Office:  Leggett,  Comm.  —  U.  S.  Pat. 
Comm.  Decis.  1871,  p.  248. 

THE  letter  ".D."  enclosed  within  a  lozenge,  admitted  to 
registration  as  a  trade-mark  on  loom  temples,  on  the  ground 
that  it  was  sufficiently  distinctive  of  the  origin  of  the  goods, 
and  was  not  descriptive  of  kind  or  quality. 


372.  Wilder  v.  Wilder. 

Kentucky  Chancery.  —  Cited  2  Sawyer,  78-89. 

INJUNCTION  granted  to  restrain  the  defendants  from  selling 
a  compound  under  the  name  of  "  J.  B.  Wilder  $  Co.'s  Stomach 
Bitters"  and  from  imitating  the  bottles  in  which  the  plain- 
tiff's compound  was  contained,  or  the  labels  affixed  to  them. 

373.  Moorman  v.  Hoge. 

October,  1871.     U.  S.  C.  C.  Dt.  of  Cal. :  Sawyer,  J.  —  2   Sawyer,  78 ;    4 
Am.  L.T.217;  6  Am.  L.  Rev.  365. 

THE  plaintiffs  being  whiskey  manufacturers,  who  sold  their 
article  in  a  barrel  of  peculiar  dimensions,  which  had  ac- 
quired the  name  of  "  The  Cutter  Barrel"  after  the  plaintiffs' 
predecessor  in  business,  and  which,  together  with  the  brands 
impressed  upon  it,  had  been  duly  registered  as  a  trade-mark 

210 


MOORMAN  V.  HOGE. 


in  the  U.  S.  Registry,  the  defendants  acted  as  agents  for  the 
sale  of  whiskey  contained  in  barrels  of  similar  dimensions,  but 
having  entirely  different  brands. 

Injunction  to  restrain  the  defendants  from  infringing  the 
plaintiffs'  rights  refused,  on  the  ground  that  (1.)  a  certificate 
by  the  commissioner  of  patents,  of  registration  as  a  trade-mark, 
did  not  preclude  the  court  from  considering  whether  a  mark 
placed  on  the  registry  was  a  good  one  or  not ;  (2.)  that  a  bar- 
rel of  peculiar  dimensions  could  not  become  a  trade-mark,  to 
be  protected  irrespective  of  the  brands  on  it,  although  if  the 
brands  were  partially  imitated,  an  imitation  of  the  peculiar 
barrel  would  be  an  element  in  deciding  the  question  of  fraud- 
ulent intention. 

"  I  find  no  case  where  the  use  of  a  package  of  peculiar  form  and 
dimensions  has  been  restrained,  without  having  imprinted  upon,  or 
connected  with  it,  some  other  symbol,  word,  letter,  or  form,  adopted 
as  a  trade-mark." l 


1  The  question  considered  in  this  case 
was  whether  a  barrel  of  a  particular  kind 
could  be  protected  as  a  trade-mark  ;  it 
is  similar  to  Harrington  v.  Libby,  538, 
which  see. 

The  court  said  :  "  Complainants  do 
not  claim  that  there  is  any  infringe- 
ment upon  that  part  of  what  they  claim 
to  be  their  trade-mark,  which  consists 
of  the  words  and  devices  stamped  upon 
the  barrel.  The  claim  is  that  there  is 
an  infringement  by  the  use  of  the  bar- 
rel only. 

"Is  the  plaintiff  entitled  to  the  ex- 
clusive use  of  a  barrel  of  this  peculiar 
form,  construction,  and  capacity,  with- 
out regard  to  any  mark  or  device  im- 
pressed upon,  or  connected  with  it  ? 
Can  a  barrel  of  this  description  be  ap- 
propriated as  a  trade-mark,  or  substan- 
tive part  of  a  trade-mark,  so  as  to  ex- 
clude the  rest  of  the  world  from  using 
it  in  the  same  branch  of  business  ?  .  .  .  . 
The  use  of  the  barrel  with  a  simulation 


of  the  complainant's  trade-mark  im- 
pressed upon  it  would,  doubtless,  be  re- 
strained. But  to  extend  the  privilege 
of  trade-mark  to  the  barrel  in  question 
alone,  without  having  impressed  upon, 
or  in  any  way  connected  with  it,  any  of 
the  other  words,  symbols,  or  devices 
claimed  and  used  by  the  complainants 
as  a  part  of  their  trade-mark,  or  any 
colorable  imitation  of  it,  would,  in  my 
judgment,  be  to  go  further  than  any 
case  heretofore  decided,  and  extend  the 
privileges  of  trade-mark  to  subjects  not 
recognized  by  any  established  legal 
principles  applicable  to  the  subject. 
After  a  careful  examination  of  the 
question,  my  conclusion  is,  that  the 
barrel  in  question,  without  any  other 
marks  or  symbols,  is  not,  and  that  it 
cannot  become,  a  lawful  trade-mark, 
or  a  substantive  or  integral  part  of  a 
lawful  trade-mark,  and  that  complain- 
ants have  no  exclusive  right  to  its  use 
as  such." 


211 


IN  BE  BLAKESLEB  &  CO. 

374.  Seltzer  v.  Powell. 
November,  1871.    Phila.  C.  P. :  Paxson,  J.  —  8  Phila.  296. 

THE  plaintiffs  having  manufactured  whiskey,  and  sold  it 
as  "  Silver  Grove  "  whiskey,  since  1867,  though  it  did  not 
appear  that  the  name  was  generally  known,  the  defendant 
began  in  1870  to  sell  whiskey  under  the  name  of  "  Silver 
Brook  "  whiskey. 

On  motion  by  the  defendant,  injunction  which  had  been 
granted  to  restrain  him  from  using  those  words  dissolved, 
on  the  ground  that  the  prior  appropriation  by  the  plaintiffs 
was  not  sufficiently  clearly  made  out,  and  that  they  must 
establish  their  claim  at  law  before  they  could  obtain  an  in- 
junction. 

« 

375.  In  re  Francis  &  Mallon. 

November  8,  1871.     U.  S.  Patent  Office:    Leggett,  Comm.—  U.  S.  Pat. 
Comm.  Decis.  1871,  p.  283. 

THE  word  "  Beaverine  "  admitted  to  registration  as  a  trade- 
mark on  boots  and  shoes  made  partly  of  beaver  cloth  and 
partly  of  leather,  on  the  ground  that,  though  the  word  was 
suggestive  of  the  material  of  which  the  article  was  in  part 
made,  it  was  not  a  word  known  to  the  language  and  in  com- 
mon use,  but  a  fancy  word  newly  coined  for  the  purpose  of 
being  used  on  the  applicants'  goods. 


376.  In  re  Blakeslee  &  Co. 

November  15,  1871.     U.  S.  Patent  Office:  Leggett,  Comm.  —  U.  S.  Pat. 
Comm.  Decis.  1871,  p.  284. 

APPLICATION  for  registration  of  the  words  and  letters 
"  Cundurango  Ointment,  C.  #.,"  as  a  trade-mark,  in  respect 
of  ointment  containing  cundurango,  a  South  American  plant, 
refused,  on  the  ground  that  the  words  were  descriptive  of  the 
article,  and  that  the  letters  did  not  add  the  requisite  distiuct- 
iveness., 

212 


ABBOTT  v.  BAKERS',  ETC.,  ASSOCIATION. 


377.  In  re  Hauthaway.    (2.) 

November  15,  1871.     V.  S.  Patent  Office:  Leggett,  Comm.—  U.  S.  Pat, 
Camtn.  Decis.  187 1,  p,  284. 

AN  application  to  register  the  words  "Beeswax  Oil"  as  a 
trade-mark  having  been  refused  on  the  ground  of  their  being 
merely  descriptive  [In  re  Hauthaway.  (1.)]  : 

Motion  to  reopen  the  case,  on  the  ground  that  the  practice 
of  the  office  had  been  changed  since  that  decision,  refused ;  and 

Held,  that  there  was  no  change  in  the  practice. 


378.    In  re  Palmer. 

November  16,  1871.     U.  S.  Patent  Office :  Leggett,  Comm.  —  U.  S.  Pal. 
Comm.  Decis.  1871,  p.  289. 

APPLICATION  for  the  registration  of  the  word  "  Invisible  " 
as  a  trade-mark,  in  respect  of  packets  of  face  powder,  refused, 
on  the  ground  that,  though  the  word  might  be  a  trade-mark 
if  used  in  a  non-natural  sense,  yet,  when  applied  to  face  pow- 
der, it  was  merely  indicative  of  a  quality  of  the  article. 


379.  Abbott  v.  The  Bakers'  and  Confectioners'  Tea  As- 
sociation, Limited. 

November  16,  1871  ;  February  8,  1872.  Malins,  V.  C.—  W.  N.  1871, 
p.  207 ;  L.  J.  Notes  of  Cases,  1871,  p.  199.  Lord  Hatherley,  C.  —  W.  N. 
1872,  p.  31. 

THE  plaintiffs  being  tea  merchants,  the  defendants  sold  tea 
in  wrappers  similar  to  those  in  which  the  plaintiffs'  tea  was 
sold,  the  general  appearance  being  imitated,  though  the  de- 
tails differed. 

Injunction  granted  to  restrain  the  defendants  from  infring- 
ing the  plaintiffs'  rights. 

Per  V.  C.  (L.  J.  N.  of  C.  1871,  p.  199).  "The  rale  of  the  court 
is  that  a  man  who  has  adopted  a  distinguishing  mark  has  a  right  to 
be  protected  against  any  other  person  adopting  one  sufficiently  like  it 
to  mislead  an  unwary  public." 

213 


EX  PABTE  DAWES  AND  FANNING. 

Per  L.  C.  (W.  N.  1872,  p.  31).  "  Though  no  one  particular  mark 
is  exactly  imitated,  the  combination  is  very  similar  and  likely  to  de- 
ceive. It  is  true  that  there  is  no  proof  that  any  one  has  been  deceived, 
or  that  the  plaintiffs  have  incurred  any  loss ;  but  where  the  similarity 
is  obvious  that  is  not  of  importance."  1 


380.  In  re  Whyte. 

November  28,  1871.      U.  S.  Patent  Office:  Duncan,  Act.  Comm. —  U.  S. 
Pat.  Comm.  Decis.  1871,^.  304. 

APPLICATION  for  letters  patent  for  a  device  described  by 
the  applicant  as  an  "  ornamental  print  for  fabrics  "  refused, 
on  the  ground  that  the  real  intention  of  the  applicant  was  to 
use  the  device  by  way  of  a  trade-mark,  and  that  this  being  so, 
he  must  apply  for  its  registration  as  a  trade-mark,  and  not  for 
letters  patent  for  it  as  a  design. 

381.  Isaacson  v.  Thompson. 
December  6,  1871.    Bacon,  V.  C.  — 41  L.  J.  Ch.  101 ;  20  W.  R.  196. 

THE  plaintiff  trading  as  a  milliner  under  the  name  of 
"  Madame  Louise"  the  defendant  began  to  use  on  his  shops 
the  names  of  "Agnes  Ellis  "  and  "  E.  Louise"  under  the  pre- 
tence that  they  were  his  daughters'  names. 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendant  from  using  those  names,  or  otherwise  causing  his 
shops  to  be  mistaken  for  the  plaintiff's,  refused,  on  the  ground 
that  the  plaintiff  had  delayed  moving  for  nine  or  ten  months 
after  he  had  obtained  sufficient  evidence  of  actual  deception. 

"  It  is  one  of  the  most  wholesome  rules  that  a  person  who  comes 
for  the  extraordinary  relief  of  an  injunction  should  come  speedily." 

382.  Ex  parte  Dawes  &  Fanning. 

1871.     U.  S.  Patent  Office  :  Leggett,  Comm.  —  lU.S.  Pat.  Gaz.  27. 
ON  an  application  to  register  a  trade-mark  for  use  on  um- 
brellas, consisting  of  the  number  "140  ": 
1  See  Williams  v.  Johnson,  150. 

214 


FORD  V.  FOSTER. 


Held,  that  the  number  was  a  good  trade-mark  within  the 
U.  S.  Statute  of  1870,  as  consisting  of  an  arbitrarily  selected 
combination  of  numerals,  and  not  used  in  its  ordinary  signifi- 
cation, and  registration  granted. 


383.  Bond  v.  Milbourn. 
December  20,  1871.     Bacon,  V.  C.—  20  W.  R.  197. 

PARTNERSHIP  suit. 

The  plaintiff  and  defendant  having  carried  on  business  in 
partnership  under  the  style  of  "James  Milbourn  $  Co.,"  and 
the  plaintiff  having  bought  the  interest  of  the  defendant  in 
the  partnership,  under  a  provision  in  the  articles,  the  defend- 
ant set  up  business  next  door,  and  employed  his  former  work- 
men, and  used  the  former  style,  so  as  to  render  the  good-will 
purchased  by  the  plaintiff  valueless. 

Held,  that  the  plaintiff  was  not  entitled  to  have  the  pre- 
mium he  had  paid  on  originally  entering  the  partnership 
returned  to  him,  since  "  Milbourn  "  was  the  defendant's  own 
name,  which  he  had  a  right  to  use  in  his  business,  and  there 
was  no  provision  in  the  articles  for  a  return  of  premium. 

384.  Ford  v.  Foster. 

January  18,  June  11,  1872.  Bacon,  V.  C.  —L.R.I  Ch.  616  ;  27  L.  T. 
N.  S.  220;  20  W.  R.  311.  James  and  Hellish,  L.  JJ.—L.  R.  7  Ch. 
611;  41  L.  J.  Ch.  682;  27  L.  T.  N.  S.  219;  20  W.  R.  818. 

THE  plaintiff  being  the  manufacturer  of  "  Ford's  Eureka 
Shirt,"  which  he  marked  "  R.  Ford's  Eureka  Shirt,  London," 
the  defendants  sold  other  shirts  as  "  The  Eureka  Shirt"  and 
marked  with  those  words. 

Injunction  granted,  on  appeal,  to  restrain  the  defendants 
from  using  the  name  "  Eureka "  upon  any  shirts  not  of  the 
plaintiff's  make,  but  the  injunction  not  to  extend  to  advertise- 
ments between  the  defendants  and  the  trade  ;  and 

Held,  (1.)  that  the  fact  that  the  plaintiff  had  habitually  used 
his  own  name  with  the  fancy  name  did  not  deprive  him  of  his 

215 


LABOUCHERE  V.  DAWSON. 

remedy ;  (2.)  that  the  name  in  question  was  not  proved  to 
have  become  publici  Juris ;  (3.)  that  the  plaintiff  was  not 
disentitled  by  reason  of  having  called  himself  "  patentee  "  in 
his  advertisements,  the  misrepresentation  being,  at  most,  col- 
lateral ;  (4.)  that  the  plaintiff  not  having  been  active  in  de- 
fending his  rights,  and  the  defendants'  business  and  connec- 
tion being  much  larger  than  his,  so  as  to  make  it  impossible 
to  calculate  the  sales  lost  to  the  plaintiff  by  those  effected  by 
the  defendants,  the  account  should  be  granted  only  from  the 
filing  of  the  bill. 

Per  Mellish,  L.  J.  "What  is  the  test  by  which  a  decision  is  to  be 
arrived  at  whether  a  word  which  was  originally  a  trade-mark  has 
become  publici  juris  ?  I  think  the  test  must  be  whether  the  use  of 
it  by  other  persons  is  still  calculated  to  deceive  the  public  ;  whether 
it  may  still  have  the  effect  of  inducing  the  public  to  buy  goods  not 
made  by  the  original  owner  of  the  trade-mark  as  if  they  were  his 
goods." 


385.    Labouohere  v.  Dawson. 

January  18,  1872.     Lord  Romilly,  M.  R.  —  L.  R.  13  .E?.  322;  41  Z.  J. 
Ch.  427;  25  L.  T.  N.  S.  894;  20  W.  R.  309. 

THE  plaintiffs  having  purchased  a  brewery  business,  the 
defendant,  being  one  of  the  vendors,  set  up  in  business  in  an- 
other place,  and  solicited  his  former  customers  to  deal  with 
him  and  not  with  the  plaintiffs,  so  as  to  destroy  the  value  of 
the  business  he  had  sold. 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendant  from  so  doing. 

"  The  good-will  is  the  probability  of  the  old  customers  going  to  the 
new  firm  to  whom  the  business  is  sold." 

"  The  new  firm,  the  defendant  in  this  case,  is  entitled  to  publish 
any  advertisement  he  pleases  in  the  papers,  stating  that  he  is  carry- 
ing on  such  business.  He  is  entitled  to  publish  any  circulars  to  all 
the  world  to  say  that  he  is  carrying  on  such  a  business,  but  he  is  not 
entitled,  either  by  private  letter,  or  by  a  visit,  or  by  his  traveller  or 
agent,  to  go  to  any  person  who  was  a  customer  of  the  old  firm  and 
solicit  him  not  to  continue  his  business  with  the  old  firm,  but  to  trans- 

216 


JAMES  V.  JAMES. 

fer  it  to  him,  the  new  firm.     That  is  not  a  fair  and  reasonable  thing 
to  do  after  he  has  sold  the  good-will." 

386.  Rowland  v.  Breidenbach. 
Lord  Romilly,  M.  R.  —  Cited  1  Trade-Marks,  261. 

THE  plaintiff  being  the  manufacturer  of  Rowland's  "  Ma- 
cassar "  Oil,  the  defendant  began  to  manufacture  and  sell  an- 
other article  under  the  name  of  "  Macas&arine" 

Injunction  to  restrain  the  defendant  from  so  doing  refused, 
on  the  ground  that  the  name  of  the  plaintiff's  article  was 
descriptive. 

387.  Weed  v.  Peterson. 

February,  1872.     N.  Y.  Sup.  Ct. :  Learned,  J.  —  12  466.  Pr.  N.  S.  178. 

THE  plaintiffs  having  succeeded  to  the  business  of  "  D. 
Simmons  $  Co."  and  having  acquired  the  right  to  use  that 
name  and  the  name  "D.  /Simmons"  alone  as  their  trade-mark, 
the  defendants  used  the  name  "  D.  Simmons  "  on  their  goods, 
having  received  the  stamps  and  labels  from  their  predecessors 
in  business  who  had  wrongfully  used  the  same. 

Action  for  an  injunction  to  restrain  the  defendants  from  so 
doing. 

Held,  (1.)  that  the  plaintiffs  were  entitled  to  an  injunction 
to  restrain  the  defendants  from  using  the  name,  notwithstand- 
ing that  the  latter  had  acted  in  ignorance  of  the  plaintiffs' 
rights,  and  had  since  discontinued  their  business  altogether, 
and  that  costs  must  be  given  ;  (2.)  but  that  the  plaintiffs 
were  not  entitled  to  recover  damages  from  the  defendants, 
since  they  had  acted  perfectly  bond  fide. 

388.  James  v.  James. 

February  23,  1872.    Lord  Romilly,  M.  R.  —  L.  R.  13  Eg.  421 ;  41  L.  J.  Ch. 
353;  26  L.  T.  N.  S.  568;  20  W.  R.  434. 

THE  plaintiffs  being  persons  entitled,  under  an  assignment 
by  Robert  James,  the  original  inventor,  to  an  ointment  known 

217 


GREEN  V.  ROOKE. 

as  'J  Lieutenant  James'  Horse  Blister,"  the  defendant,  Robert 
Joseph  James,  began  to  sell  an  ointment  under  the  same  name, 
with  the  signature  "  Robert  James,"  and  a  statement  that  it 
alone  was  genuine. 

Injunction  granted  to  restrain  the  defendant  from  omitting 
the  name  Joseph  from  his  signature,  and  from  stating  that  his 
ointment  alone  was  genuine  ;  but 

Held,  that  the  defendant  could  not  be  restrained  from  using 
the  name  "  Lieutenant  James'  Horse  Blister"  that  having  be- 
come the  name  by  which  the  article  was  known,  and  the  de- 
fendant not  having  come  into  possession  of  the  secret  recipe 
by  a  breach  of  trust  or  fraud. 

"  When  a  person  has  discovered  a  valuable  invention,  and  has  not 
patented  it,  any  one  who  has  discovered  the  ingredients  (I  am  not 
talking  of  the  case  of  a  breach  of  trust,  or  of  fraud,  or  the  like)  may 
sell  those  ingredients,  and  may  use  the  name  of  the  person  who  has 
discovered  them  after  his  death,  but  not  in  his  lifetime,  so  as  to  sug- 
gest that  they  are  made  by  him."  * 

389.  Green   v.  Rooke. 

February  23,  1872.     Wickens,  V.  C.—  W.  N.  1872,  p.  49;  L.  J.  Notes  of 
Cases,  I872,p.  54. 

THE  plaintiff  being  the  proprietor  of  an  ointment  known 
as  "  Dr.  Johnson's  "  or  "  Singleton's  Golden  Ointment,"  the 
recipe  of  which  had  been  invented  by  one  Dr.  Johnson  in  the 
seventeenth  century,  and  had  long  been  in  the  possession  of 
the  Singleton  family,  the  defendant  began  to  sell  an  ointment 
under  the  name  of  "  Dr.  Moose's  Grolden  Ointment." 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the  de- 
fendant from  selling  any  ointment  under  the  name  "  Grolden 
Ointment"  refused,  on  the  ground  that,  although  persons 
were  not  at  liberty  to  sell  "  Singleton's  Ointment,"  there  was 
no  law  to  prevent  the  sale  of  "  Grolden  Ointment  "  by  those 
who  could  discover  its  composition.2 

1  See  Thorley's  Cattle  Food  Co.  v.  2  See  Singleton  v.  Bolton,  4. 

Massam,  671. 

218 


HALLETT  V.  CUMSTON. 


39O.  Wolfe  v.  Barnett. 

February,  1872.     Sup.  Ct.  of  Louisiana.—  24  La.  Ann.  97;  13  Amur.  Rep. 

111. 

THE  plaintiff  making  and  selling  "  Wolfe's  Aromatic  Schie- 
dam Schnapps,"  the  defendants  sold  other  spirits  under  the 
same  name. 

Injunction  granted  to  restrain  the  defendants  from  so  do- 
ing, with  damages ;  and 

Held,  that  the  following  defences  failed :  (1.)  that  the 
defendants  had  used  their  mark  for  ten  years  ;  (2.)  that  the 
plaintiff  was  not  the  first  manufacturer  of  the  article;  (3.) 
that  the  separate  words  used  by  the  plaintiff  were  not  new, 
the  combination  being  so ;  (4.)  that  the  defendants  had  a 
written  permission  from  a  Mr.  Wolfe,  not  being  the  plaintiff, 
to  use  his  name ;  (5.)  that  the  plaintiff's  label,  which  he 
stated  to  be  copyright,  did  not  show  the  date  of  entry. 


391.  Hallett  v.   Cumston. 
March,  1872.     Mass.  Sup.  Ct.—  110  Mass.  (14  Browne)  29. 

THE  plaintiff  having  been  in  partnership  with  the  defend- 
ant's father  as  "  Hallett  $  Cumston"  and  having,  on  the  ter- 
mination of  the  partnership,  entered  into  the  latter's  service 
under  an  agreement  by  which  the  latter  was  to  have  the  use 
of  the  plaintiff's  name  during  the  continuance  of  the  agree- 
ment, the  defendant  continued,  after  his  father's  death,  to 
carry  on  his  father's  business  under  the  old  name,  and  on  the 
plaintiff  withdrawing  his  permission  to  use  his  name,  obtained 
the  use  of  the  name  of  another  person  of  the  same  name. 

Injunction  to  restrain  the  defendant  from  using  the  name 
"  Hallett "  or  "Hallett  $  Cumston  "  refused,  on  the  ground 
that  (1.)  the  plaintiff  had  no  interest  in  the  name  or  trade- 
mark of  "  Hallett  £  Cumston  ;  "  (2.)  as  to  the  name  Hallett, 
although  the  defendant  could  not  use  the  plaintiff's  name  with- 

219 


MORRISON  V.  CASE. 


out  his  consent,  that  did  not  prevent  him  from  using  the  name 
of  another  person,  though  the  same. 


392.  Blackwell  v.  Armistead. 

March,  1872.     U.  S.  C.  C.  W.  Dt.  ofVa. :  Rives,  J.—5  Am.  L.  T.  85; 
Browne  on  Trade-Marks,  510. 

THE  plaintiffs  being  manufacturers  of  tobacco  at  Durham, 
North  Carolina,  who  used  as  their  trade-mark  a  side  view  of 
a  bull,  with  the  words  " Genuine  Durham  Smoking  Tobacco" 
the '  defendant  also  manufactured  tobacco,  and  sold  it  with 
labels  containing  the  figure  of  a  bull's  head,  with  the  words 
"  The  Durham  Smoking  Tobacco." 

Injunction  granted  to  restrain  the  defendant  from  infring- 
ing the  plaintiff's  rights.1 

393.  Scott  v.  Rowland. 
March  16,  1872.     Wickens,  V.  C.—  26  L.  T.  N.  S.  391;  20  W.  R.  508. 

THE  plaintiff  having  been  in  partnership  with  the  defend- 
ant as  glass-stainers,  under  the  name  of  "  John  Scott  $•  Co." 
and  having  been  bought  out  by  the  latter,  the  defendant  con- 
tinued to  trade  under  the  old  name  of  "  John  Scott  $•  Co." 

On  motion  by  the  plaintiff  injunction  granted  to  restrain 
the  defendant  from  using  the  plaintiff's  name  in  connection 
with  his  business,  so  as  to  represent  that  the  plaintiff  was  a 
partner  in  his  business,  on  the  ground  that  the  retention  of 
the  name  of  an  outgoing  partner,  who  survived  the  dissolution 
of  partnership,  in  the  firm  name  of  the  business,  might  to  some 
extent  render  him  responsible  for  the  liabilities  of  the  concern. 


394.  Morrison  v.  Case. 

April,  1872.     U.  S.  C.  C.  Dt.  of  Conn.  :  Shipman,  J.  —  9  Bl  C.   C.  548; 
2  U.  S.  Pat.  Gaz.  544. 

THE  plaintiff  being  the  proprietor  of  certain  trade-marks 
registered  under  the  United  States  Act  of  1870,  and  consist- 
l  See  Blackwell  v.  Wright ,  466. 
220 


COOK  V.  STARKWEATHER. 

ing  respectively  of  the  words  "  The  Star  Shirt"  the  words 
"  The  Star  Shirt"  together  with  the  figure  of  a  star,  and  the 
words  and  device  "  The  *  Shirt"  the  defendant  sold  other 
shirts  under  the  same  marks. 

Suit  for  an  injunction  to  restrain  the  defendant  from  in- 
fringing the  plaintiff's  trade-marks. 

Held,  that  the  marks  in  question  were  lawful  trade-marks 
within  the  act,  and  that  the  injunction  must  be  granted. 


395.  Cook  v.  Starkweather. 
1872.     N.  Y.  Sup.  Ct. :  Monell,  J.  —  13  Abb.  Pr.  N.  S.  392. 

THE  plaintiffs  being  whiskey  manufacturers  who  sold  their 
whiskey  in  barrels  branded  with  the  words  "  Valley  Whiskey  " 
or  "  Old  Valley  Whiskey"  the  letters  "  A  A  A,"  and  a  Maltese 
cross,  the  head  of  the  barrel  being  glazed  in  a  particular  man- 
ner and  the  rim  painted  red,  the  defendants  sold  other  whis- 
key in  barrels  similarly  prepared  and  branded,  except  that  the 
letters  "  XXX"  and  a  crown  were  substituted  for  the  letters 
"  AAA  "  and  the  cross. 

Action  for  an  injunction  to  restrain  the  defendants  from 
infringing  the  plaintiffs'  rights. 

Held,  that,  whether  the  plaintiffs  were  or  were  not  entitled 
to  the  exclusive  use  of  the  words  "  Valley  Whiskey  "  or  "  Old 
Valley  Whiskey"  which  was  not  clearly  established,  the  course 
of  conduct  adopted  by  the  defendants  was  intended  and  calcu- 
lated to  deceive,  and  the  plaintiffs  were  therefore  entitled  to 
an  injunction. 

"  The  package,  case,  or  vessel  in  which  the  commodity  is  put,  if 
prepared  in  a  peculiar  or  novel  manner,  though  in  itself,  perhaps,  not 
a  trade-mark,  may  very  properly  be  a  very  important  part  of  it ;  and 
where  a  peculiar  device  is  applied  to  a  box  or  barrel  which  has  been 
especially  prepared  to  receive  and.  give  prominence  to  the  design,  such 
specially  prepared  box  or  barrel  constitutes  a  part  of  the  trade-mark, 
and  may  participate  in  the  protection  which  will  be  given  to  the  trade- 
mark itself." 

"  The  rule  is,  that  the  imitation  of  a  trade-mark  need  not  be  exact 

221 


BADDE  V.  NORMAN. 

and  perfect.  It  may  embrace  variations  that  a  comparison  would 
instantly  disclose.  Yet,  if  a  resemblance  exists  which  was  designed 
to  mislead  the  public,  its  use  may  be  restrained."  1 

396.  Winsor  v.  Clyde. 

Stetson  v.  Winsor. 
May  21,  1872.     Phila.  C.  P.  —  9  PUla.  513. 

CROSS  motions  for  injunctions. 

Held,  (1.)  that  Stetson  &  Co.,  who  carried  on  business  as 
shippers  of  merchandise  by  ships  which  they  did  not  own,  but 
of  which  they  had  the  entire  management  while  loading  and 
unloading,  etc.,  and  who  denominated  each  line  of  vessels  used 
by  them,  and  plying  in  a  particular  direction,  by  the  name 
"  The  Keystone  Line  for ,"  had  acquired  a  right  of  prop- 
erty in  the  name  ;  (2.)  that  Winsor  and  Harding,  who  had 
owned  the  steamships  employed  for  a  certain  period  on  one 
of  these  lines,  had  acquired  no  right  in  the  name  by  its  appli- 
cation to  their  ships,  but  had  at  most  been  entitled  to  use  the 
name  under  a  revocable  license  ;  (3.)  that  an  injunction  must 
be  granted  to  restrain  Winsor  and  Harding  from  continuing 
to  use  the  name  after  the  termination  of  their  connection  with 
Stetson  &  Co.,  and  that  their  motion  for  an  injunction  must 
be  refused. 

397.  Badde  v.  Norman. 

May  30,  1872.     Wickens,  V.  C.—  L.  R.  14  Eq.  348;  41  L.  J.  Ch.  525; 
26  L.  T.  N.  S.  788 ;  20  W.  R.  766. 

THE  plaintiff  being  entitled  to  the  exclusive  right  of  im- 
porting from  the  Leopoldshall  mines  in  Anhalt  a  kind  of  rock 
salt  called  "  Kainit"  and  who  designated  it  "  The  G-enuine 
Leopoldshall  Kainit"  the  defendants  sold  another  article,  not 
being  the  article  which  the  plaintiff  had  the  exclusive  right  of 
exporting,  under  the  name  of  "  Kainit  \_Leopold$alt\" 

On  motion  by  the  plaintiff  injunction  granted  to  restrain 
the  defendants  from  infringing  his  rights.2 

1  See    Williams  v.  Johnson,  150.  2  See    Congress,   frc.    Spring   Co.   v. 

High  Rock  Congress  Spring  Co.,  354. 

222 


AKMISTEAD  V.  BLACKWELL. 

398.  Hookham  v.  Pottage. 

June  7,  November  12,  1872.  Malins,  V.  C.  —  L.R.8  Ch.  93  n. ;  26  L.  T. 
N.  S.  755 ;  20  W.  R.  720.  James  and  Hellish,  L.  JJ.  —  L.  R.  8  Ch.  91 ; 
27  L.  T.  N.  S.  595 ;  21  W.  R.  47. 

THE  plaintiff,  defendant,  and  defendant's  brother  having 
been  in  partnership  as  tailors,  under  the  name  of  "  Hookham 
and  E.  $•  S.  Pottage,"  on  the  dissolution  of  that  partnership 
the  plaintiff  was  held  by  the  Court  of  Chancery  to  be  entitled 
to  continue  in  possession  of  the  business,  the  defendant  re- 
ceiving the  value  of  his  interest ;  and  the  plaintiff  continued 
to  trade  under  the  new  name  of  "  Hookham  $  Co."  The  de- 
fendant subsequently  set  up  in  business  within  a  few  doors  of 
the  plaintiff,  and  placed  over  his  shop  the  words  "  S.  Pottage, 
from  Hookham  and  Pottage"  the  words  "from  "  and  "  and  " 
being  in  small  letters. 

Injunction  granted  to  restrain  the  defendant  from  using  the 
plaintiff's  name  in  such  a  manner  as  to  deceive,  on  the  ground 
that,  although  the  defendant  was  entitled  to  state  fairly  his 
connection  with  the  former  firm,  he  was  not  entitled  to  act  so 
as  to  divert  to  himself  custom  intended  for  the  plaintiff.1 


399.  Armistead  v.  Blackwell. 

June  14,  1872.    U.S.  Patent  Office  :  Leggett,  Comm.  —  1U.S.  Pat.  Gaz. 
603;  Browne  on  Trade-Marks,  495. 

BLACKWELL  (who  manufactured  tobacco  at  Durham,  N.  C., 
in  succession  to  Green,  who  had  begun  to  designate  his  to- 
bacco as  "  Durham  "  tobacco  in  1865)  having  obtained  reg- 
istration of  a  trade-mark  consisting  of  the  words  "  Durham 
Smoking  Tobacco,  Manufactured  by  W.  T.  Blackwell,  Durham, 
North  Carolina,"  Armistead,  who  manufactured  tobacco  at 
Lynchburg,  Va.,  applied  for  the  registration  in  his  name  of 
the  words  "  Durham  Smoking  Tobacco"  His  business  was 
carried  on  in  succession  to  W.  A.  Wright,  who  had  in  1860, 
when  in  partnership  with  Morris  as  "  Morris  &  Wright," 
1  See  Cotton  v.  Thomas,  305. 

223 


HIRST  V.  DENHAM. 

begun  to  designate  his  tobacco  made  at  Durham  as  "  Best 
Spanish-Flavored  Durham  Smoking  Tobacco"  but  had  dis- 
solved partnership  with  Morris  in  1861,  and  after  a  few 
months  longer  discontinued  manufacturing  altogether  till  1869, 
when  he  again  began  to  prepare  tobacco  for  the  market. 

Interference  declared  for  the  purpose  of  determining  to  which, 
if  either,  the  words  "  Durham  Smoking  Tobacco  "  belonged. 

Held,  (1.)  that,  to  be  entitled  to  claim  the  benefit  of  the 
prior  user  of  Morris  &  Wright,  Armistead  should  show  that 
he  claimed  through  Morris  as  well  as  through  Wright ;  (2.) 
that,  at  all  events,  the  user  by  his  predecessor  was  longer  than 
that  by  Blackwell's  predecessor ;  (3.)  but  that  the  words 
were  not  registrable  as  a  trade-mark,  and  that  Blackwell  had 
obtained  registration  by  error,  since  a  geographical  name  could 
not  constitute  a  trade-mark  capable  of  becoming  the  exclusive 
property  of  any  one  person,  but  must  remain  open  to  the  use 
of  all  inhabitants  of  the  town  or  district,  although  strangers 
might  be  enjoined  against  the  use  of  it ;  (4.)  and  that  the 
fact  that  Blackwell  had  obtained  a  wrongful  registration  of 
the  words  mentioned,  which  could  not  be  cancelled,  could  not 
entitle  Armistead  to  a  similar  wrongful  registration,  and  that 
his  application  must  be  refused.1 

40O.  Hirst  v.  Denham. 

June  20,  1872.  Bacon,  V.  C.—L.  R.  14  Eq.  542;  41  L.  J.  Ch.  752;  27 

L.  T.  N.  S.  56. 

THE  plaintiff  being  a  manufacturer  of  woollen  cloths,  who 
had  invented  and  adopted  certain  new  fancy  patterns  and 
named  them  respectively  "Turin"  "Sefton"  "Leopold"  "Liv- 
erpool" the  defendants,  one  of  whom  had  been  in  the  plain- 
tiff's service,  began  to  use  the  same  names  on  tickets  resem- 
bling the  plaintiff's  affixed  to  cloths  of  their  own  make  of  a 
similar  pattern  to  the  plaintiff's,  but  of  inferior  quality. 

On  motion  by  the  plaintiff  injunction  granted  to  restrain 
the  defendants  from  describing  their  cloths  by  those  names, 
1  See  Newman  v.  Alvord,  282. 

224 


SMITH  V.  REYNOLDS. 


and  from  placing  them  on  tickets  affixed  to  their  cloths,  imitat- 
ing the  plaintiff's  tickets,  etc.1 


401.  Smith  v.  Reynolds.     (1.) 

June,  1872.      U.  S.  C.  C.   S.  Dt.  of  N.  Y. :  Blatchford,  J.  —  10  BL   C. 
C.  85;  3  U.  S.  Pat.  Gaz.  213. 

SUIT  for  an  injunction  to  restrain  the  infringement  of  the 
plaintiffs'  trade-mark,  registered  under  the  U.  S.  Act  of  1870. 

Injunction  refused,  on  the  ground  that  there  was  no  suffi- 
cient evidence  of  the  filing  at  the  Patent  Office  of  a  declara- 
tion under  oath  as  to  the  right  to  the  mark,  as  required  by 
the  act,  the  only  evidence  produced  being  a  certificate  by  the 
commissioner  of  patents  of  the  registration  of  the  trade-mark, 
of  the  filing  of  a  statement  in  respect  of  the  mark,  and  that 
the  registrant  had  otherwise  complied  with  the  act,  etc.,  but 
which  certificate  did  not  refer  to  any  such  declaration  as  was 
required. 

402.  Smith  v.  Reynolds.    (2.) 

July,  1872.     U.  S.  C.  C.   S.  Dt.  of  N.  Y.:  Blatchford,  /—  10  BL  C.  C. 
100;  3  U.  S.  Pat.  Gaz.  214. 

THE  plaintiffs  being  paint  manufacturers,  who  had  regis- 
tered as  their  trade-mark  on  paints,  under  the  U.  S.  Act  of 
1870,  a  device  of  a  crown,  but  who  had  not  actually  used  it  on 
white  lead,  the  defendants,  who,  or  their  predecessors  in  busi- 
ness, had  used  a  device  of  a  crown  on  white  lead  previously 
to  the  use  and  registration  of  the  device  by  the  plaintiffs',  con- 
tinued so  to  do. 

On  motion  by  the  plaintiffs  for  an  injunction  to  restrain  the 
defendants  from  so  doing  : 

Held,  (1.)  that  the  registration  of  the  device  in  the  name 
of  the  firm,  and  not  in  the  names  of  the  individual  partners, 
was  good ;  (2.)  that  the  registration  for  paints  generally  was 

1  It  appears  that  the  circumstance  that  some  of  these  words  were  geograph* 
ical  names  was  not  considered. 

15  225 


IN  KB  JOHNSON  &  CO. 

good,  without  further  description  of  the  particular  goods ; 
(3.)  that  the  device  of  a  crown  was  a  good  registrable  trade- 
mark within  the  act ;  (4.)  but  that  the  prior  use  of  the  de- 
vice on  white  lead  by  the  defendants  prevented  the  plaintiffs 
from  having  a  right  to  register  the  mark  in  respect  of  white 
lead,  and  that  the  registration,  being  bad  in  respect  of  part  of 
the  class  it  purported  to  cover,  was  bad  altogether ;  (5.)  that 
the  motion  for  injunction  must  be  refused. 


4O3.  Mack  v.    Fetter. 

July  23,  1872.     Lord  Romilly,  M.  R.  —  L.  R.   14  Eg.  431;  41  L.  J.  Ch. 
781;  20  W.R.  964. 

THE  plaintiff  being  the  proprietor  and  publisher  of  "The 
Birthday  Scripture  Text-Book"  the  defendants  brought  out  a 
book  of  similar  arrangement  and  style,  under  the  name  of 
"  The  Children's  Birthday  Text-Book" 

Injunction  granted  to  restrain  the  defendants  from  publish- 
ing any  book  with  that  title,  or  any  other  title  calculated  to 
deceive,  and  from  imitating  the  arrangement,  binding,  etc.,  of 
the  plaintiff's  book  in  such  a  way  as  to  deceive.1 


404.    In  re  Johnson  &  Co. 

September  12,  1872.     U.  S.  Patent  Office :  Thacher,  Act.  Comm.  —  2  U.  S. 

Pat.  Gaz.  315. 

APPLICATION  for  the  registration  of  two  trade-marks,  con- 
sisting respectively  of  the  words  and  letters  "  Parsons'  Pur- 
gative Pills,  P.  P.  P."  and  "  Johnson's  American  Anodyne 
Liniment,  Established  A.  D.  1810"  refused,  on  the  ground 
that  both  designations  were  descriptive  of  the  article ;  the 
letters  "  P.  P.  P"  becoming  so  when  used  in  combination 
with  the  words  of  which  they  were  the  initials,  though,  if 
used  alone,  they  might  have  acquired  an  arbitrary  significa- 
tion ;  and  the  date  of  discovery  in  the  second  case  not  sup- 
plying the  needed  distinctiveness. 

1  See  Hogg  v.  Kirby,  10. 

226 


McGOWAN  BROS.  PUMP  MACHINE  CO.  V.  McGOWAN. 

405.    In  re  ToUe. 

October  3,   1872.     U.  S.  Patent  Office:    Thacher,  Act.Comm.-2  U.S. 

Pat.  Gaz.  415. 

APPLICATION  for  the  registration  of  two  trade-marks  for 
flour,  consisting  of  the  words  "  Cherry  St.  Mills"  in  the  one 
case,  and  "  Market  St.  Mills  "  in  the  other,  combined  in  both 
cases  with  the  masonic  emblem  of  the  square  and  compass, 
refused,  on  the  ground  that  as  to  the  name  of  the  locality  no 
exclusive  right  could  be  acquired ;  and  as  to  the  emblem,  it 
could  not  be  divested  of  its  universal  signification  and  be  ex- 
clusively appropriated  in  a  particular  business ;  and  that,  as 
to  the  whole,  a  combination  of  two  objectionable  parts  could 
not  constitute  a  valid  trade-mark. 

406.  The    McGowan    Bros.    Pump  Machine   Co.  v.  Mo- 

Gowan. 

October,  1872.     Cincinnati  Super.  Ct.  — 2  Cine.  313. 

THE  defendant  in  error,  J.  H.  McGowan,  having  been  in 
partnership  with  his  brother,  T.  J.  McGowan,  as  machine 
manufacturers,  sold  his  interest  in  the  partnership  to  his 
brother,  reserving  the  right  to  manufacture  under  the  part- 
nership patents.  The  notice  of  dissolution  of  partnership 
stated  that  T.  J.  McGowan  was  to  use  the  firm  name  "  in 
settlement,"  and  to  carry  on  business  "  under  the  old  style 
firm  name."  T.  J.  McGowan,  having  joined  with  other  per- 
sons, incorporated  a  company  under  the  name  "  The  Mc- 
Gowan Bros.  Pump  and  Machine  Co.,"  being  the  plaintiffs 
in  error.  J.  H.  McGowan,  the  defendant  in  error,  recom- 
menced business  under  the  name  of  "John  H.  McGowan  £ 
Co."  at  "  The  McG-owan  Engine  and  Pump  Company's 
Works." 

Action  by  the  defendant  in  error.  , 

Injunction  granted  to  restrain  the  plaintiffs  in  error  from 
the  use  of  the  words  "  The  McG-owan  Brothers"  as  part  of 
their  name,  except  on  patterns  sold  by  J.  H.  to  T.  J.  Mc- 

227 


LEA  V.  WOLFF. 

Gowan,  and  castings  therefrom,  on  the  ground  that,  although 
the  good-will  of  the  partnership  business  passed  to  T.  J.  Mc- 
Gowan,  he  had  only  a  revocable  license  to  use  the  name,  and 
that  the  continued  user  by  him  was  injurious  to,  and  objected 
to  by,  the  defendant  in  error.  But  the  plaintiffs  in  error  to 
be  at  liberty  to  style  themselves  "  Successors  to  the  Mc- 
G-oivan  Brothers." 

Per  Hagans,  J.  "  There  can  be  no  doubt  that,  where  one  partner 
sells  to  another  partner  a  going  business,  every  advantage  arising 
from  the  fact  of  the  sole  ownership  of  the  premises,  stock,  and  estab- 
lishment, including  advantages  acquired  by  the  old  firm  in  carrying 
on  its  business,  whether  connected  with  the  old  place  or  the  old 
name,  passes  to  the  purchaser.  But  the  vendor  will  not  be  pre- 
vented from  carrying  on  a  similar  business  when,  where,  or  with  whom 
he  pleases." 


407.    Lea  v.  Wolff. 

November,  1872 ;  October,  1873.  N.  Y.  Sup.  Ct. :  In  graham,  P.J.  —  IS 
Abb.  Pr.  N.  S.  389;  1  Thomp.  fl-  C.  626.  N.  Y.  Sup.  Ct.  —  l  Thomp. 
§•  C.  626;  15  Abb.  Pr.  N.  S.I;  46  How.  Pr.  157;  1  Am.  L.  T.  N.  S. 

•    400. 

THE  plaintiffs  being  manufacturers  in  Worcestershire  of  a 
sauce  which  they  called  "  Worcestershire  Sauce,'"  the  defendants 
began  to  manufacture  a  sauce  elsewhere,  which  they  called  by 
the  same  name,  and  placed  on  their  bottles  labels  very  closely 
resembling  those  of  the  plaintiffs,  except  that  their  own  names 
appeared  as  those  of  the  manufacturers. 

On  motion  by  the  plaintiffs  for  an  injunction  to  restrain  the 
defendants  from  using  the  name  and  labels : 

Held,  by  Ingraham,  P.  J. :  (1.)  that  the  name,  being  the 
name  of  the  locality  in  which  the  sauce  was  made,  could  not 
be  protected  as  a  trade-mark;  (2.)  but  that  an  injunction 
must  be  granted  to  restrain  the  imitation  of  the  labels. 

Held,  by  the  General  Term  of  the  Supreme  Court,  that  the 
injunction  must  be  extended  to  restrain  the  use  of  the  name 
"  Worcestershire  Sauce,"  since  it  was  evident  that  the  defend- 

228 


SOHIER  V.  JOHNSON. 

ants  had  acted  with  fraudulent  intention,  and  they,  further, 
did  not  manufacture  within  the  county  in  question. 

Per  Fancher,  J.  "  Where  words  or  names  are  in  common  use,  no 
one  person  can  claim  a  special  appropriation  of  them  to  his  peculiar 
use  ;  but  where  words  and  the  allocation  of  words  have,  by  long  use, 
become  known  as  designating  the  article  of  a  particular  manufacturer, 
he  acquires  a  right  to  them  as  a  trade-mark,  which  competing  dealers 
cannot  fraudulently  invade.  The  essence  of  the  wrong  is  the  false 
representation  and  deceit.  When  the  improper  design  is  apparent 
an  injunction  should  be  issued." 

"  As  a  general  rule,  geographical  names  cannot  be  appropriated  as 
trade-marks  ;  but  the  rule  has  its  exception,  where  the  intention  in 
the  adoption  of  the  descriptive  word  is  not  so  much  to  indicate  the 
place  of  manufacture  as  to  encroach  upon  the  previous  use  and  popu- 
larity of  another's  trade-mark."  1 


4O8.  Sohier  v.  Johnson. 
November,  1872.     Mass.  Sup.  Ct.  — 111  Mass.  (15  Browne)  238. 

W.  P.  WINCHESTER,  surviving  partner  in  the  firm  of  "_Z£ 
A.  £  W.  Winchester"  whose  trade-mark  consisted  of  that 
firm  name,  having  taken  the  defendant  into  partnership,  and 
died,  and  the  defendant  having  subsequently  continued  to 
trade  under  and  use  that  name,  for  some  years  in  partnership 
with  others,  and  afterwards  by  himself,  the  plaintiffs,  being 
W.  P.  Winchester's  executors  and  trustees,  sold  the  factory 
and  premises  to  a  third  person. 

Suit  for  an  injunction  to  restrain  the  defendant  from  using 
the  trade-mark,  and  an  order  for  him  to  join  in  conveying  it 
to  the  purchaser  from  the'plaintiffs. 

Held,  that  the  trade-mark  had  become  the  property  of  the 
partnership  between  W.  P.  Winchester  and  the  defendant, 
on  its  formation,  and  had  descended  to  the  defendant  on  the 
death  of  the  former,  and  that  the  plaintiffs  had  no  right 
therein,  and  that  the  injunction  and  order  must  be  refused. 

"  The  trade-mark  is  the  device  or  symbol  used  to  identify  the  ar- 
i  See  Lee  v.  Haley,  325  ;  Lea  v.  Miller,  513. 
229 


THE  MERIDEN  BRITANNIA  CO.  V.  PARKER. 

ticle  manufactured,  and  the  right  to  use  it  will  pass  with  the  business 
and  good-will  as  an  incident,  unless  something  appears  to  show  a  dif- 
ferent intention  of  the  parties." 

409.  The  Meriden  Britannia  Co.  v.  Parker. 

November,  1872.     Conn.  Sup.  Ct.  —  39  Conn.  450;  12  Amer.  Rep.  401;  13 
Am.  L.  Reg.  N.  S.  153. 

THE  plaintiff  having  acquired  from  three  brothers  named 
Rogers  the  right  to  use  a  trade-mark,  "  1847,  Rogers  Bros., 
A  1,"  and  the  brothers  Rogers  being  employed  by  them  to 
superintend  the  manufacture  of  the  goods  so  stamped,  the  de- 
fendant began  to  place  on  similar  goods  stamps  containing 
the  words  "  0.  Rogers  Bros.,  A  1,"  and  "  C.  Rogers  $  Bros., 

Injunction  granted  to  restrain  the  defendant  from  using 
such  stamps  or  any  other  stamp  containing  the  words  "Rogers 
Bros."  though  he  had  used  his  stamps  by  the  permission  of 
three  brothers  of  the  name  of  Rogers. 

But  Held,  that  no  injunction  could  be  granted  as  to  the 
name  "  Rogers "  alone,  nor  with  respect  to  goods  already 
stamped  by  the  defendant,  the  parties  being  left  to  their 
remedy  at  law  as  to  the  last  point. 

Held,  also,  that  the  fact  that  the  goods  bearing  the  trade- 
mark were  not  actually  made  by  persons  whose  names  were 
Rogers  was  not  such  a  misrepresentation  as  disentitled  plain- 
tiff to  be  heard  in  a  court  of  equity. 

Per  Carpenter,  J.  "  The  fact  that  careful  buyers  who  scrutinize 
trade-marks  closely  are  not  deceived  does  not  materially  affect  the 
question.  It  only  shows  that  the  injury  is  less,  not  that  there  is  no 
injury."  J 

l  Burgess  v.  Burgess,  117  ;  Pidding  v.  How,  60. 

230 


OSGOOD  V.  ALLEN. 

410.  Osgood  v.  Allen. 

November,  1872.     U.  S.  C.   C.  Dl.  of  Maine  :  Shepley,  J.—  l    Holmes, 
185;  6  Am.  L.  T.  20;  3  K  S.Pat.  Gaz.  124. 

THE  plaintiffs  being  the  proprietors  and  publishers  of  a 
monthly  magazine  for  the  young,  published  at  Boston,  Mass., 
under  the  title  "  Our  Young  Folks ;  an  Illustrated  Magazine 
for  Boys  and  Girls"  the  defendant  began  to  advertise  and 
publish  and  sell  at  Augusta,  Maine,  a  fortnightly  illustrated 
paper  for  the  young,  under  the  title  "  Our  Young  Folks'  Illus- 
trated Paper" J 

Suit  for  an  injunction  to  restrain  the  defendant  from  using 
the  words  "  Our  Young  Folks  "  as  the  title  of  a  publication.2 

Held)  (1.)  that  the  title  of  a  copyrighted  publication  was 
not  capable  of  protection  as  copyright,  except  in  conjunction 
with  the  publication  which  it  was  used  to  designate,  and  that 
the  copyright  in  the  paper  not  having  been  infringed,  that  in 
the  title  had  not  been ;  (2.)  that,  treating  the  title  on  prin- 
ciples applicable  to  trade-marks,  the  case  must  be  referred 
to  a  master  to  report  whether  the  use  of  the  title  by  the 
defendant  was  deceiving,  or  was  calculated  to  deceive  the 
public.3 

"  Words  or  devices  may  be  adopted  as  trade-marks,  which  are  not 
original  inventions  of  the  one  who  adopts  and  uses  them.  Words  in 
common  use  may  be  adopted,  if,  at  the  time  of  adoption,  they  were 
not  used  to  designate  the  same  or  similar- articles  of  production.  A 
generic  name,  or  a  name  merely  descriptive  of  an  article  of  trade,  or 
its  qualities  or  ingredients,  cannot  be  adopted  as  a  trade-mark,  so  as 
to  give  a  right  to  the  exclusive  use  of  it.  The  office  of  a  trade-mark 
is  to  point  distinctively  to  the  origin  or  ownership  of  the  article  to 
which  it  is  affixed.  Marks  which  only  indicate  the  names  or  quali- 
ties of  products  cannot  become  the  subjects  of  exclusive  use,  for,  from 
the  nature  of  the  case,  any  other  producer  may  employ,  with  equal 
truth  and  the  same  right,  the  same  marks  for  like  products.  Geo- 

1  This  case  is  not  to  be  taken  as  of         2  See  Hogg  v.  Kirby,  10. 
force  in  disturbing  the  well  settled  doc-         8  See  Jollie  v.  Jaques,  105. 
trine  that  the  name  of  a  periodical  is, 
primd  facie,  a  trade-mark. 

231 


IN  RE  GRAHAM. 


graphical  names,  which  point  out  only  the  place  of  production,  and 
not  the  producer,  cannot  be  appropriated  exclusively,  so  as  to  prevent 
others  from  using  them  and  selling  articles  produced  in  the  districts 
they  describe  under  these  appellations." 


411.  Broadhurst  v.  Barlow. 

November  21,  1872.     Wickens,  V.  C.  —  W.  N.  1872,  p.  212;  L.  J.  Notes 
of  Cases,  1872,  p.  183. 

THE  plaintiffs  being  manufacturers  of  Spanish  shirtings  for 
export  to  the  East,  who  marked  their  goods  with  a  lion  in  a 
scroll,  the  words  "  Spanish  Shirtings  "  in  a  scroll,  the  figures 
"  No.  120"  certain  lines,  and  the  words  "  exactly  12  yards" 
in  Turkish,  Armenian,  and  Greek,  the  defendants  used  on 
their  goods  an  elephant  and  castle  in  place  of  a  lion,  and 
curved  instead  of  straight  lines,  the  marks  being  in  other  re- 
spects the  same. 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendants  from  using  the  words  "  exactly  12  yards  "  in 
the  same  languages  as  the  plaintiffs  used,  and  placed  between 
a  figure  or  crest  and  the  words  "  Spanish  Shirtings "  in  a 
scroll,  in  a  manner  similar  to  that  used  by  the  plaintiffs. 

And  Held,  that  an  offer  to  submit  and  abandon  the  mark 
objected  to  did  not  deprive  the  plaintiffs  of  their  right  to  the 

injunction.1 

> 

412.  In  re  Graham. 

November  30,  1872.     U.  S.  Patent  Office  :  Thacher,  Act.  Comm.  —  2  U.  S. 

Pat.  Gaz.  618. 

APPLICATION  for  the  registration  of  the  words  "  The  New 
Manny"  as  a  trade-mark  for  a  harvesting  machine,  refused, 
on  the  ground  that  the  term  "  the  Manny"  was  commonly 
applied  to  a  large  class  of  machines,  that  the  word  '''•new" 
was  practically  equivalent  to  " improved"  and  that  the  words, 
therefore,  merely  constituted  a  descriptive  appellation  of  the 
article. 

1  See  Millington  v.  Fox,  63. 
232 


THE  SINGER  MANUF.  CO.  v.  KIMBALL  AND  MORTON. 

413.  The  Singer  Manufacturing  Co.  v.  Kimball  and  Mor- 
ton. 

January  14,  1873.     Ct.  of  Session.  —  Ct.  of  Sess.  Cos.  3d  Ser.  XL  267; 
10  Scot.  L.  Rep.  173. 

THE  plaintiffs  being  American  manufacturers  of  the  "  Sin- 
ger" sewing-machines,  the  defendants  advertised  machines  for 
sale  as  "  Singer "  machines,  but  placed  their  own  names,  as 
those  of  the  makers,  on  all  of  them. 

Interdict  granted  to  restrain  the  defendants  from  using  the 
name  "  Singer  "  in  respect  of  machines  other  than  those  made 
by  the  plaintiffs,  on  the  ground  that  the  name  was  indicative 
of  machines  of  the  plaintiffs'  make,  and  not  of  machines  made 
according  to  a  certain  principle  of  construction. 

Per  Lord  President  Inglis.  "  Whether  it  be  a  star,  or  any  other 
device,  or  a  name,  as  in  the  present  case,  the  result  is  the  same.  If 
it  be  exclusively  appropriated  for  a  series  of  years,  and  has  obtained 
a  certain  exclusive  meaning  in  the  trade,  as  signifying  the  goods  or 
the  productions  of  a  particular  manufacturer,  then  it  is  his  property 
as  a  trade-mark,  and  no  one  else  is  entitled  to  use  it." 

"  In  an  application  for  an  interdict  it  is  not  only  not  necessary  to 
prove  any  pecuniary  damage,  but  it  is  not  necessary  to  prove  that 
any  injury  has  been  actually  inflicted.  A  threat  of  injury  is  a  suffi- 
cient ground  for  an  application  for  an  interdict,  and  in  like  manner  a 
reasonable  apprehension  of  injury  from  the  proceedings  of  the  parties 
complained  against  is  also  in  many  circumstances  a  very  good  ground 
for  such  an  application." 

Per  Lord  Ardmillan.  "  Singer  &  Co.  have  no  monopoly  of  the 
invention,  and  no  exclusive  right  to  make  or  to  sell  the  machine. 
Any  one  may  make  it,  any  one  may  sell  it.  But  there  must  be  no 
deception,  no  sailing  under  false  colors,  no  unfair  and  delusive  as- 
sumption of  a  trade-mark,  or  of  a  name  appropriated  and  known  as 
a  trade-mark."  1 

1  See  Singer  Man.  Co.  v.  Wilson,  477. 

233 


BURKE  V.  CASSIN. 

414.  Christie  v.  Christie. 

January  15,  March  20,  1873.  Matins,  V.  C.  —  42  L.  J.  Ch.  261 ;  L.  R.  8 
Ch.  502  n.  Lord  Selborne,  C.  and  Hellish,  L.  J.  —  L.  R.  8  Ch.  499 ; 
42  L.  J.  Ch.  544 ;  28  L.  T.  N.  S.  607 ;  21  W.  R.  493. 

THE  plaintiffs  being  Messrs.  Christie,  Manson  &  Woods, 
auctioneers,  the  defendants  issued  a  certain  prospectus  in 
which  they  styled  themselves  "  Messrs.  Christie  $  Christie" 
and  made  preparations  for  carrying  on  business  under  the 
name  of  "  Christie  $•  Co" 

Suit  by  the  plaintiffs  for  an  injunction  to  restrain  the  de- 
fendants from  so  doing.  Exceptions  for  scandal  to  a  state- 
ment in  the  bill,  to  the  effect  that  one  of  the  defendants  had, 
on  a  previous  occasion,  been  brought  up  in  a  police  court  on  a 
charge  of  fraud. 

Held,  on  appeal,  that  the  exceptions  must  be  allowed,  on 
the  ground  that  such  a  charge  of  fraud,  even  if  it  could  be 
substantiated,  was  wholly  immaterial  to  the  suit  in  question, 
and  that  its  insertion  in  the  bill  was  not'  only  scandalous  but 

oppressive. 

i 

415.  Burke  v.  Cassin. 
January,  1873.     Col.  Sup.  Ct.  —  45  Col.  467;  13  Amer.  Rep.  204. 

THE  plaintiff  being  the  executor  of  Udolpho  Wolfe,  who 
manufactured  and  sold  "  Wolf  e* s  Aromatic  Schiedam  Schnapps" 
the  defendants  sold  other  spirits  under  the  name  of  "  Von 
Wolfs"  or  "  Van  Wolf's  Aromatic  Schiedam  Schnapps." 

Injunction  granted  to  restrain  the  defendants  from  using 
the  name  "  Wolfe,"  or  "  Wolf,"  or  "  Von  Wolf,"  or  "  Van  Wolf," 
but  not  from  using  the  words  "Aromatic  Schiedam  Schnapps," 
those  words  being  descriptive  of  the  article. 

234 


STERNBERGER  v.  THALHEIMER. 


416.  In  re  Richardson. 

February   7,  1873.      U.  S.  Patent  Office:  Leggett,  Comm.  —  3  U.  S.  Pat. 

Gaz.  120. 

APPLICATION  for  the  registration  of  the  words  "  A.  Rich- 
ardson's Patent  Union  Leather- Splitting  Machine  "  as  a  trade- 
mark refused,  as  to  the  word  '•'•patent"  on  the  ground  that, 
the  patent  having  expired,  the  continued  use  of  the  word 
was  deceptive ;  and,  as  to  the  remainder,  on  the  ground  that 
the  name,  having  been  applied  to  a  patented  article  during 
the  existence  of  the  patent,  had  become  descriptive  of  the 
article,  and  open  to  the  use  of  the  public  on  the  expiration  of 
the  patent.1 


417.   Sternberger  v.  Thalheimer. 

February  8,  1873.     U.  S.  Patent  Office:  Thacher,  Act.  Comm.—  3  U.  S. 

Pat.  Gaz.  120. 

THALHEIMER  having  in  five  or  six  instances  used  the  word 
"  Centennial"  as  an  experimental  trade-mark  on  clothing, 
about  March  6,  1872,  and  procured  the  registration  of  the 
word  as  his  trade-mark,  but  not  having  used  the  word  seri- 
ously until  June,  Sternberger,  in  February,  1872,  registered  a 
trade-mark  containing  that  word,  with  other  particulars,  be- 
gan to  use  the  word  extensively  about  March  12,  1872,  and 
applied  for  registration  of  the  word  as  his  trade-mark. 

Interference  declared  between  the  parties. 

Held,  that,  notwithstanding  the  prior  registration  of  Thal- 
heimer, Sternberger  was  entitled  to  registration,  since  he  was 
the  first  to  use  the  word  seriously,  besides  having  previously 
registered  it  in  combination  with  other  particulars. 

1  The  decision  here,  as  in  other  cases,  is  made  to  rest  upon  conclusions  of  fact. 
See  Pidding  y.  How,  60. 

235 


TUDOR  v.  TUDOR. 

418.  Laird  v.  Wilder. 

February,  1873.     Kentucky  Ct.  of  A  pp.  —  2  Bush,   131  ;    15  Amer.  Rep. 

707. 

THE  plaintiff  manufacturing  and  selling  "  Laird's  Bloom  of 
Youth  or  Liquid  Pearl,"  the  defendants  began  to  sell  another 
preparation  in  bottles  of  a  similar  shape  to  the  plaintiff's,  and 
with  labels  copied  in  all  particulars  from  his,  except  that  for 
"  Creorge  W.  Laird,  No.  74  Fulton  Street,  New  York,"  were 
substituted  the  words,  "  Joseph  Laird,  No.  384  Broadway, 
New  York." 

Injunction  to  restrain  the  defendants  from  so  doing  refused, 
on  the  ground  that  the  plaintiff's  preparation  contained  car- 
bonate of  lead,  or  other  noxious  ingredients,  whereas  he  de- 
scribed it  as  being  "  free  from  all  mineral  and  poisonous  sub- 
stances," and  that  he  was,  therefore,  disentitled  to  relief.1 


419.  Tudor  v.  Tudor. 
March  13,  1873.     Malms,  V.  C.—  W.  N.  1873,  p.  72. 

THE  plaintiff,  W.  Tudor,  having  transferred  a  business, 
which  he  had  carried  on  in  partnership  with  his  brother  S. 
Tudor,  during  the  latter's  lifetime,  and  since  his  death,  alone, 
under  the  name  of  "  S.  $•  W.  Tudor,"  to  the  defendants,  the 
sons  of  S.  Tudor,  the  defendants  continued  to  use  the  plain- 
tiff's initial  "  TF."  as  part  of  their  firm  name,  notwithstand- 
ing that  there  was  an  express  provision  in  the  deed  under 
which  the  plaintiff  retired  for  the  removal  of  his  name  from 
the  business. 

On  motion  by  the  plaintiff  injunction  granted  to  restrain 
the  defendants  from  continuing  so  to  do. 

1  See  Pidding  v.  How,  60. 
236 


FULLWOOD  V.  FULLWOOD. 

42O.  Corns  v.  Griffiths. 

May  3,  1873.     Malms,  V.  C.  —  W.  N.  1873,  p.  93  ;   Perriberton,  2d  ed. 

308. 

THE  plaintiffs  being  the  proprietors  of  a  weekly  newspa- 
per entitled  The  Iron  Trade  Circular  (Rylands1},  the  defend- 
ant, who  had  for  many  years  published  a  weekly  report  of  the 
iron  trade,  not  in  the  form  of  a  newspaper,  as  The  Iron  Trade 
(Griffiths'  Weekly  Report),  substituted  for  this  report  a  news- 
paper much  resembling  the  plaintiffs',  and  entitled  The  Iron 
Trade  Circular  (Edited  by  Samuel  Griffiths). 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendant  from  using  a  title  for  his  newly  established 
newspaper  identical  with  that  used  by  the  plaintiffs  for 
theirs.1 


421.  Fullwood  v.  Fullwood.     (1.) 

May  5,  July  31,   1873.     Matins,  V.  C.—  W.  N.  1873, p.  93.    James  and 
Hellish,  L.  JJ.—  W.  N.  1873,  p.  185. 

THE  plaintiff  being  a  manufacturer  of  annatto,  trading  as 
"  R.  J.  Fullwood  $  Co."  and  who  sold  his  annatto  in  earth- 
enware bottles,  with  special  labels  on  the  sides,  the  defend- 
ant, H.  Fullwood,  the  plaintiff's  nephew,  began  to  manufact- 
ure annatto  under  the  name  of  "  H.  Fullwood  $•  Co."  though 
he  had  no  partner,  and  removed  into  the  same  street  as  the 
plaintiff,  and  sold  his  goods  in  similar  bottles,  similarly  la- 
belled to  the  plaintiff's,  as  to  which  several  instances  of  actual 
deception  were  proved. 

On  motion  by  the  plaintiff,  injunction  granted  to  restrain 
the  defendant  from  selling  his  annatto  in  similar  bottles  la- 
belled in  a  similar  manner  to  the  plaintiff's. 

1  See  Hogg  v.  Kirby,  10. 

237 


BROWNE  V.  FREEMAN. 


422.  In  re  The  American  Sardine  Co. 

May  13,  1873.    U.  S.  Patent  Office:  Leggett,  Comm.  —  3U.  S.  Pat.  Gaz. 

495. 

APPLICATION  for  registration  of  the  words  "American 
Sardines  "  as  a  trade-mark  on  boxes  containing  a  species  of 
American  fish,  not  the  true  sardines,  refused,  on  the  ground 
that  the  application  of  the  words  to  fish,  not  being  really 
sardines,  was  calculated  to  deceive  purchasers,  while,  if  ap- 
plied to  true  sardines,  the  words  would  be  properly  descriptive 
of  the  fish.1 


423.  Witt  v.  Corcoran. 

June  13,  1873.     Bacon,V.  C.  —  Seton,  4th  ed.  257  ;  2  Ch.  D.  69;  45  L.  J. 
Ch.  603;  34  L.  T.  N.  S.  550;  24  W.  R.  501. 

THE  plaintiff  having  been  in  partnership  with  the  defend- 
ant and  his  son,  under  the  firm  of  '•''Bryan  Corcoran,  Witt  $ 
Co."  and  having  purchased  the  business,  good-will,  trade 
names,  trade-marks,  etc.,  the  defendant  carried  on  business 
under  the  name  of  "  Bryan  Corcoran  $•  Co."  or  "  Bryan 
Corcoran,  Son  $  Co" 

Injunction  granted  to  restrain  the  defendant  from  carrying 
on  business  under  those  names,  or  any  other  name  calculated 
to  induce  the  belief  that  the  defendant  was  carrying  on  busi- 
ness in  succession  to  the  original  firm,  and  from  interfering 
with  letters  intended  for  the  original  firm. 


424.  Browne  v.  Freeman.     (2.) 

July  23,  1873.  James  and  Hellish,  L.  JJ.  —  W.  N.  1873,  p.  178. 
THE  plaintiff  being  the  original  inventor  of  chlorodyne,  but 
who  had  lost  his  exclusive  right  in  the  name,  the  defendant 
represented  that  a  medicine  of  his  own  manufacture  was  the 
"  True  and  Original  Chlorodyne"  and  made  certain  other  rep- 
resentations with  regard  to  his  chlorodyne. 

Injunction  to  restrain  the  defendant  from  so  doing  refused, 

1  See  Pidding  v.  How,  60. 

238 


POPHAM  V.  WILCOX. 

on  the  ground  that  the  name  had  become  the  name  of  the 
article  ;  that  the  defendant  had  always  sold  his  under  his  own 
name,  and  that  any  false  statements  in  the  defendant's  adver- 
tisements only  amounted  to  slander,  for  which  damages  were 
the  proper  remedy.1 

425.  Popham  v.  Wilcox. 
(Afterwards   Popham  v.  Cole.) 

1873;  December  9,  1874;  April  25,  1876.  N.  Y.  Super.  Ct.:  Monell,  J. 
- 14  Abb.  Pr.  N.  S.  206.  N.  Y.  Super.  Ct.—  38  N.  Y.  Super.  Ct.  (6  J. 
fr  S.)  274.  N.  Y.  Ct.  of  App.—  &Q  N.  Y.  (21  Siekels)  69;  23  Amer. 
Rep.  22. 

THE  plaintiff  being  a  manufacturer  of  refined  lard,  which 
he  sold  in  vessels  stamped  with  the  figure  of  a  fat  hog,  his 
name,  and  "  Prime  Leaf  Lard  "  the  defendants  began  to  sell 
the  same  article  in  vessels  stamped  with  a  globe,  a  small  wild 
boar,  their  name,  and  "  Prime  Leaf  Lard" 

Action  for  an  injunction  to  restrain  the  defendants  from  in- 
fringing the  plaintiff's  rights. 

Held)  by  Monell,  J.,  that  although  there  was  not  much  sim- 
ilarity between  the  marks  when  seen  side  by  side,  the  defend- 
ants' mark  was  likely  to  attract  to  itself  the  same  name  as  the 
plaintiff's,  namely,  "the pig  brand,"  and  that,  therefore,  the 
injunction  which  had  been  granted  must  be  continued. 

Held,  by  the  General  Term  of  the  N.  Y.  Superior  Court, 
that  the  plaintiff  being  unable  to  prove  himself  to  have  been 
the  first  inventor,  and  it  being  proved  that  the  pig  mark  had 
been  used  by  various  other  refiners,  the  injunction  must  be 
dissolved. 

Held,  by  the  N.  Y.  Ct.  of  App.,  that  the  decision  in  favor 
of  the  defendants  must  be  maintained,  on  the  ground  that 
there  was  not  sufficient  resemblance  between  the  marks  to  be 
calculated  to  deceive ;  and,  further,  that  it  was  doubtful 
whether  the  figure  of  the  animal  from  which  the  lard  was 
derived  was  not  descriptive  of  the  article,  and,  therefore,  in- 
capable of  being  appropriated. 

1  See  Cocks  v.  Chandler,  351. 
239 


HARDY  V.  CUTTER. 

Per  Monell,  J.  "  The  question  in  these  cases  always  is,  whether 
there  is  such  a  similarity  of  the  two  devices  as  to  deceive  the  public. 
It  is  not  required  that  the  imitation  shall  be  so  close  as  to  require  a 
careful  examination  to  detect  the  difference,  nor  that  it  shall  be  such 
that  persons  entirely  familiar  with  one  would  not  be  mistaken.  But 
it  must  have  such  a  resemblance  to  the  genuine  that  the  general  pub- 
lic would  be  likely  to  mistake  the  one  for  the  other." 

"  A  mere  design  to  injure  would  not  of  itself  be  sufficient.  It  must 
be  accompanied  by  evidence  of  actual  or  prospective  injury,  but  in 
establishing  the  injury  the  intent  may  properly  be  considered." 

Per  N.  Y.  Ct.  of  App.  "  The  question  in  this,  as  in  every  other 
case,  is  whether  there  is  such  resemblance  between  the  two  as  to  de- 
ceive a  purchaser  using  ordinary  caution The  court  is  not 

bound  to  interfere  where  ordinary  attention  will  enable  purchasers  to 
discriminate  between  the  trade-marks  used  by  different  parties." 


426.  Dawes  v.  Davies. 
1873.     N.  Y.  C.  P.—  Codd.  Dig.  260. 

THE  plaintiff  being  an  umbrella  manufacturer,  whose 
trade-mark  consisted  of  the  number  "  140,"  placed  in  a  white 
oblong  within  a  five-pointed  star,  the  defendants  used  on  their 
umbrellas  the  number  "  142  "  within  a  sunburst. 

Motion  by  the  plaintiffs  for  an  injunction  to  restrain  the 
defendants  from  so  doing  refused,  on  the  ground  that  it  was 
not  probable  that  persons  of  ordinary  intelligence  would  be 
deceived. 

427.  Hardy  v.  Cutter. 

1873.     Dt.  Ct.  ofCal:  Wheeler,  J.—3  U.  S.  Pat.  Gaz.  468. 

THE  plaintiffs  being  manufacturers  of  "  Cutter  "  whiskey 
(as  successors  by  purchase  to  J.  H.  Cutter),  who  branded 
their  barrels  with  a  crown  and  the  words  "  J.  H.  Cutter  —  Old 
Bourbon"  and  used  wrappers  and  labels  containing  the  same 
words  with  other  particulars,  the  defendant,  a  sou  of  J.  H. 
Cutter,  also  manufactured  whiskey,  and  used  wrappers  and 
labels  containing  the  words  "  J.  F.  Cutter,  son  of  the  late  J. 

240 


CLEMENS  V.  SUCH. 

H.  Cutter,  of  Louisville,  Ky."  the  wrappers  and  labels  bear- 
ing no  other  resemblance  to  the  plaintiffs'. 

Action  for  an  injunction  to  restrain  the  defendant  from 
so  doing. 

Demurrer  allowed,  on  the  ground  that  there  was  no  simi- 
larity between  the  marks  except  in  the  use  of  the  name  "  Cut- 
ter" and  that,  with  regard  to  the  name,  the  defendant  was 
entitled  to  use  his  own  name  in  an  honest  manner. 

"  Every  person  has  the  right  to  use  his  own  name  in  connection 
with  the  articles  he  manufactures  or  sells,  provided  he  does  not  use  it 
in  such  a  way  as  to  deceive  or  defraud  the  public,  or  to  obtain  for 
himself,  at  the  expense  of  another,  an  undue  advantage." 

428.  Lowell  Manufacturing   Co.  v.  Lamed. 
1873.      U.  S.  C.  C.  Dt.  of  Perm.—  Codd.  Dig.  341. 

THE  plaintiffs  being  carpet  manufacturers,  who  were  in 
the  habit  of  rolling  their  carpets  upon  a  peculiarly  formed 
stick,  made  in  two  pieces,  and  with  the  ends  shaped  into  oc- 
tagonal rings,  which  appeared  in  the  centre  of  the  rolls  of 
carpet,  and  who  had  registered  this  stick  in  the  U.  S.  as  their 
trade-mark,  the  defendants  began  to  roll  their  carpets  upon 
similar  sticks. 

Injunction  granted  to  restrain  the  defendants  from  infring- 
ing the  plaintiffs'  rights.1 


429.  Clemens  v.  Such. 
July  11,  1873.     N.  Y.  Sup.  Ct.  —  Codd.  Dig.  312. 

THE  plaintiff,  an  author,  who  wrote  under  the  nom  de  plume 
of  "  Mark  Twain"  having  agreed  to  allow  the  defendant  to 
publish  one  of  his  essays  in  a  book  of  selections,  and  having 
delivered  to  him  a  volume  of  his  essays,  published  but  not 
copyrighted,  for  him  to  select  one  of  them  therefrom,  the  de- 

1  While  it  is  not  improbable  that  the  the  injunction  was  granted  upon  an  ex 
stick  used  by  the  complainant  in  this  parts  application,  practically  with  the 
case  was  a  perfectly  good  trade-mark,  defendants'  consent. 

16  241 


OSGOOD  v.  EOCKWOOD. 

fendant  published  in  bis  book  six  essays  purporting  to  be  by 
Mark  Twain,  with  a  statement  on  the  title-page  that  they  had 
been  specially  revised  and  selected  by  Mark  Twain  for  the 
purpose,  five  of  the  six  being  taken  from  the  plaintiff's  vol- 
ume, and  the  sixth  not  being  his  at  all. 

On  motion  by  the  plaintiff  injunction  granted  to  restrain 
the  defendant  from  using  the  nom  de  plume  on  the  title-page 
of  his  book,  or  as  the  author  or  reviser  of  any  book,  and  from 
publishing  any  matter  alleged  to  have  been  written  by  the 
plaintiff  under  his  nom  de  plume,  except  one  essay  from  the 
plaintiff's  volume,  but  the  defendant  to  be  at  liberty  to  state 
on  his  title-page  that  the  book  included  a  sketch  by  Mark 
Twain.1 


430.  Osgood  v.  Bockwood. 

September,  1873.     U.  S.  C.  Ct.  S.  Dt.  of  N.  Y. :  BlatcTiford,  J.—  11  Bl. 

C.  C.  310. 

THE  plaintiffs  being  American  patentees,  under  an  assign- 
ment by  the  English  inventor,  of  a  class  of  prints  known  as 
"  Heliotypei"  and  who  had  registered  the  word  "  Heliotype  " 
as  their  trade-mark  in  respect  thereof  under  the  U.  S.  Act  of 
1870,  the  defendant  used  the  word  "  Heliotype  "  or  "  Heilo- 
type  "  on  prints  not  produced  by  the  patented  process. 

Injunction  to  restrain  the  defendant  from  using  the  word 
refused,  on  the  ground  that,  whatever  rights  th6  plaintiffs 
might  have  apart  from  the  act,  and  which  the  act  preserved 
to  them  (but  which  the  bill  was  not  framed  to  assert),  they 
were  not  entitled  to  any  remedy  in  virtue  of  the  registration 
under  the  act,  since  the  defendant  had  not  used  the  word 
upon  substantially  the  same  goods  as  those  in  respect  of  which 
it  was  registered  by  them.2 

1  See  Lord  Byron  v.  Johnston,  23.  prevailed  ;  and  it  is  equally  plain  that 

2  It  is  not  to  be  doubted  that  had  the  had   their  mark   been   more  carefully 
complainants    here   relied  upon   their  registered,   an  injunction   might  have 
common   law  right   they  would   have  issued. 

242 


SIEGERT  V.  EHLEES. 


431.  Raggett  v.  Findlater. 

November  11, 1873.    Matins,  V.  C.  —L.  R.  17  Eq.  29;  43  L.  J.  Ch.  64; 
29  L.  T.  N.  S.  448;  22  W.  R.  53. 

THE  plaintiff  being  a  manufacturer  of  stout,  who  sold  it  in 
bottles  bearing  labels  on  which  the  words  "  Nourishing  Lon- 
don Stout "  were  conspicuous,  the  defendants  sold  stout  in 
bottles  bearing  labels  having  on  them  the  words  "  Nourishing 
Stout,"  but  differing  in  other  respects  from  the  plaintiff's. 

Injunction  to  restrain  the  defendants  from  using  the  words 
"  Nourishing  Stout "  refused,  on  the  ground  that  a  right  of 
trade-mark  could  not  be  acquired  in  a  mere  English  adjective 
denoting  quality. 

"  It  is  of  the  highest  importance  that,  on  the  one  hand,  every  pro- 
tection should  be  given  to  trade-marks  when  fairly  and  properly  used, 
and  when  used  within  just  limits  ;  and,  on  the  other  hand,  it  is  of  great 
imporatnce  that,  by  the  use  of  a  particular  word  or  anything  which 
may  be  called  a  trade-mark,  the  right  should  not  be  unduly  extended 
so  as  to  infringe  on  the  right  of  traders  to  call  their  articles  by  a  qual- 
ity they  possess,  or  to  give  an  undue  protection  to  any  man  who  hap- 
pens to  use  a  particular  word." 


432.  Siegert  v.  Ehlers. 

February  3,  1874.       Trinidad  Sup.   Ct.  — Cited  1  Ch.  D.  803;  38  L.  T. 

N.  S.  351. 

THE  plaintiffs  being  a  firm  manufacturing  at  Ciudad  Boli- 
var (formerly  Angostura),  in  Venezuela,  a  fluid  which  they 
called  '•'•Aromatic  Bitters"  and  put  up  in  bottles  enclosed  in 
wrappers,  which  were  printed  with  the  name  of  the  prepara- 
tion, and  a  description  in  several  languages  of  its  virtues  and 
uses,  the  defendant,  an  agent  of  another  manufacturer  at  Ciu- 
dad Bolivar,  sold  another  article  in  bottles  in  very  similar 
wrappers. 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendant  from  using  wrappers  printed  with  the  name 

243 


COPE  V.  EVANS. 


"Aromatic  Bitters,"  and  a  description  of  the  uses  of  the  arti- 
cle, in  imitation  of  the  plaintiffs'.  l 


433.  Cope  v.  Evans. 

February  14,  1874.     Hall,  V.  C.  —  L.  R.  18  Eq.  138;  30  L.  T.  N.  S.  292; 

22  W.  R.  453. 

THE  plaintiffs  being  cigar  manufacturers,  who  sold  their 
cigars  in  boxes  branded  with  the  words  "  Flor  Fina  Prairie 
Superior  Tabac"  and  the  figure  of  a  hunter,  the  defendants 
manufactured  cigars  and  sold  them  in  boxes  branded  with  the 
words  "  Flor  de  la  Prairie"  and  the  half-figure  of  a  girl. 

Injunction  to  restrain  the  defendants  from  using  the  word 
"Prairie"  refused,  on  the  ground  that  no  actual  deception 
was  proved,  and  that  it  was  not  to  be  anticipated  that  decep- 
tion would  occur. 

"  In  cases  where  it  appears  that  defendants  have  adopted  a  plain- 
tiff's trade-mark,  and  it  is  proved  that  defendants'  object  in  doing  so 
was  to  pass  off  their  own  goods  as  those  of  the  plaintiff,  the  court 
will,  without  further  inquiry,  restrain  the  defendants,  and  it  will  also 
do  so  where  there  has  been  such  adoption,  although  proof  of  the  de- 
fendants' object  be  wanting,  if  it  appears  that  any  one  has  in  fact 
been  thereby  induced  to  buy  the  defendants'  goods  as  being  the  goods 
of  the  plaintiff.  In  the  absence  of  proof  of  such  object  and  of  such 
deception,  if  the  two  trade-marks  are  not  to  the  eye  of  the  court 
either  altogether  identical,  or  so  similar  that  the  court  considers  the 
difference  unsubstantial,  the  plaintiff  must  make  out  to  the  satisfac- 
tion of  the  court  that  its  intervention  is  required  to  protect  the  plain- 
tiff from  the  defendants'  goods  being  taken  for  his  (the  plaintiff's). 
For  the  plaintiff  to  say  that  his  name  or  mark  is  to  be  found  on  the 
defendants'  goods  is  not  sufficient."  2 

1  See  Coffeen  v.  Brunton,  99.  said  in  effect :  There  is  no  evidence  of 

2  It  is  to  be  remarked  that  the  court  intent  or  of  deception  or  mistake,  and, 
declined  to  issue  an  injunction,  because  in  view  of  the  obvious  differences  in  the 
the  marks  as  applied  presented  a  wholly  labels  and  appearance  of  the  goods  and 
different  appearance,  and  there  was  not  want  of  proof  of  fraud,  I  cannot  assume 
sufficient  evidence  on  which  to  predi-  the  responsibility   of   saying  that  the 
cate  the  conclusion    that    the    public  case  is  one  for  an  injunction. 

would  be  misled.     The  learned  judge 

244 


BROWN  V.  MERCER. 

434.  Wolfe  v.  Burke. 

March,  1874.     N.  Y.  Sup.  Ct.  —  l  N.  Y.  Sup.  Ct.  (7  Lans.)  151;  2  U.  S. 
Pat.  Gaz.  441.    N.  Y.  Ct.  ofApp.  —  56  N.  Y.  (11  Sickels)  115. 

THE  defendants  manufactured  and  sold  spirits,  in  succession 
to  Udolpho  Wolfe,  as  "  Wolfe's  Aromatic  Schiedam  Schnapps" 
and  threatened  proceedings  against  the  plaintiffs,  who  sold 
"  Hudson  a.  Wolfe's  Bell  Schnapps." 

Injunction,  which  had  been  granted  to  restrain  the  defend- 
ants from  interfering  with  the  plaintiffs'  business  by  such 
threats,  dissolved ;  and 

Held,  that  the  plaintiffs  were  not  entitled  to  the  favorable 
consideration  of  a  court  of  equity,  because :  (1.)  they  had 
endeavored  to  secure  a  part  of  the  good-will  of  the  defend- 
ants' business,  while  avoiding  an  infringement  of  their  trade- 
mark ;  (2.)  they,  as  well  as  the  defendants,  had  improperly 
represented  their  article  as,  not  merely  a  spirit,  but  a  medic- 
inal preparation.1 

« 

435.  Brown  v.  Mercer. 

March,  1874.     N.  Y.  Super.  Ct.:  Van  Vorst,  J.  —  B7  N.  Y.  Super.  Ct.  (5 

/.  £  S.)  265. 

THE  plaintiff  being  a  manufacturer  of  a  preparation  for 
dressing  leather,  who  sold  his  preparation  in  bottles  enclosed 
in  wrappers  peculiarly  colored  and  arranged,  the  defendant 
sold  a  similar  preparation  in  similar  bottles,  and  gradually 
assimilated  his  wrappers  more  and  more  to  the  plaintiff's. 

On  motion  by  the  plaintiff  injunction  granted  to  restrain 
the  defendant  from  infringing  the  plaintiff's  rights. 

"  It  is  no  answer  that,  in  certain  particulars,  the  defendant's  label 
differs  from  the  plaintiff's,  so  long  as  the  imitation  in  other  respects 
is  so  apparent  that  purchasers  have  been  and  are  likely  to  be  de- 
ceived." 2 

1  See  Pidding  v.  How,  60.  2  See  Williams  v.  Johnson,  150. 

245 


KIDD  &  CO.  V.  MILLS,  JOHNSON  &  CO. 

436.  Missouri  (State  of)  v.  Gibbs. 

March,  1874.     Missouri  Sup.  Ct.  —  56  Mo.  (15  Post)  133. 

THE  defendant  imitated  Messrs.  Lea  &  Perrin's  "  Worces- 
tershire /Sauce  "  and  the  labels  and  wrappers  used  upon  it  by 
them. 

Held,  that  the  Missouri  Statute  of  Feb.  22, 1870,  making 
an  infringement  of  trade-mark  a  criminal  offence  in  that 
State,  was  applicable  to  cases  in  which  the  imitated  trade- 
mark was  the  property  of  English  or  other  foreign  manufact- 
urers. 

"  Trade-marks  are  valuable  to  the  persons  who  have  a  proprietary 
interest  in  them,  and  to  the  people  who  buy  and  use  the  articles,  be- 
cause they  are  a  guarantee  of  their  genuineness." 


437.  Kidd  &  Co.  v.  Mills,  Johnson  &  Co. 

March  28,  1874.      U.    S.  Patent  Office:  Leggett,  Comm.  —  5  U.  S.  Pat. 

Gaz.  337. 

S.  N.  PIKE  having,  when  in  partnership  at  Cincinnati  with 
H.  Pike  as  "  S.  N.  and  If.  Pike"  adopted  as  trade-marks  for 
whiskey  the  words  " Magnolia  " and  " Dave  Jones"  continued 
to  use  those  marks,  sometimes  trading  alone,  sometimes  in 
partnership  with  various  other  persons.  At  a  time  when  he 
was  in  partnership  with  Kidd  as  "  S.  N.  Pike  $  Co"  he  sold 
the  premises  on  which,  and  the  apparatus,  etc.,  with  which 
the  company  carried  on  business  at  Cincinnati,  but  which 
were  his  private  property,  to  Mills,  Johnson  &  Co.,  and  gave 
them  what  purported  to  be  a  license  to  use  the  brands  used 
by  him.  Mills,  Johnson  &  Co.  having  registered  those  words 
as  their  trade-marks,  Kidd  &  Co.,  consisting  of  Kidd  and 
another  surviving  partner  in  the  firm  of  "  S.  N.  Pike  $  Co." 
carrying  on  business  at  New  York,  since  the  removal  from 
Cincinnati,  applied  for  the  registration  of  those  words  as  their 
trade-marks. 

246 


REID  V.  SIBBALD. 

Interference  declared  between  the  parties  to  try  the  right 
to  the  marks. 

Held,  (1.)  that  on  the  dissolution  of  the  various  firms  in 
which  S.  N.  Pike  was  concerned,  the  right  to  use  the  trade- 
marks must  be  held  to  have  continued  in  him  as  the  continu- 
ing partner,  and  to  have  been  abandoned  by  the  retiring  part- 
ners, they  having  set  up  no  claim  thereto ;  (2.)  that  he 
brought  this  right  with  him  into  the  successive  firms  which  he 
formed ;  (3.)  that  at  the  time  of  the  sale  to  Mills,  Johnson  & 
Co.  the  trade-marks  were  the  property  of  S.  N.  Pike  &  Co., 
and  not  of  S.  N.  Pike  individually  ;  (4.)  that  the  right  to  use 
the  trade-marks  did  not,  therefore,  pass  to  Mills,  Johnson  & 
Co.  on  the  sale  of  S.  N.  Pike's  Cincinnati  premises,  nor  under 
the  license  which  he  purported  to  give  them ;  (5.)  that  the 
trade-marks,  therefore,  remained  the  property  of  S.  N.  Pike 
&  Co.,  and  passed  to  Kidd  &  Co.,  the  successors  of  that  firm, 
and  that  Kidd  &  Co.  were,  therefore,  entitled  to  registration. 


438.  Reid   v.   Sibbald. 

April  10,  May  13,  1874.     Home,  Sheriff" Subs.;  Monro,  Sheriff  of  Linlith- 
gowshire. —  18  Journ.  ofJurisp.  392. 

THE  plaintiff  being  a  sheriff's  officer  named  William  Rob- 
erts, the  defendant,  a  draper,  began  to  issue  circulars  to  his 
debtors,  signed  "  Andrew  Roberts,"  threatening  proceedings 
if  their  debts  were  not  paid  within  a  certain  time. 

Interdict  granted,  notwithstanding  that  the  defendant  had 
discontinued  the  practice,  and  had  given  up  the  remaining 
circulars,  to  restrain  the  defendant  from  attaching  the  name 
"  Andrew  Roberts,"  or  "  Roberts  "  with  any  other  Christian 
name,  to  such  circulars,  on  the  ground  that  the  defendant 
intended  to  induce  and  had  induced  a  belief  that  the  circulars 
were  issued  by  the  plaintiff,  and  that  the  plaintiff  would  be 
injured  by  his  name  being  supposed  to  be  affixed  to  such 
absurd  documents. 

247 


RICHARDS  V.  WILLIAMSON. 

439.  The  Glendon  Iron  Co.  v.  Uhler. 

May,  1874.     Penn.  Sup.  Ct.  —  15  Penn.  St.467;  15  Amer.  Rep.  599;  13 
Am.  L.  Reg.  N.  S.  543;  6  U.  S.  Pat.  Gaz.  154. 

THE  plaintiffs  having  long  stamped  the  word  "  Glendon  " 
on  their  iron  manufactured  within  that  borough,  having  com- 
menced to  do  so  prior  to  the  incorporation  of  the  borough,  the 
defendants  set  up  in  business  in  the  same  place,  and  began  to 
stamp  the  same  word  on  their  iron. 

Injunction  to  restrain  the  defendants  from  so  doing  refused, 
on  the  ground  that  all  persons  manufacturing  within  the 
borough  had  an  equal  right  to  use  the  name.1 


440.   Isaacs  v.  Daly. 

May,   1874.     N.  Y.  Super.  Ct.:  Curtis,  J.—  39  N.  Y.  Super.  Ct.  (7  /.  & 

5.)  511. 

THE  plaintiff  being  the  author  of  a  copyright  play  en- 
titled "  Charity"  the  defendant  purchased  another  play  bear- 
ing the  same  name,  and  proceeded  to  represent  it  under  that 
name. 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendant  from  so  doing  refused,  on  the  ground  that  the  use 
of  a  word  of  such  general  application  could  not  be  restrained 
in  the  absence  of  bad  faith,  and  that  the  defendant  did  not 
appear  to  have  acted  otherwise  than  bond  fide. 


441.  Richards  v.  Williamson. 
June  10,  1874.     Bacon,  V.  C.  —  30  L.  T.  N.  S.  746  ;  22  W.  R.  765. 

THE  plaintiff  being  a  gun-maker,  who  stamped  the  lock- 
plates  and  levers  of  his  rifles  with  the  name  "  ~Westley  Rich- 
ards" or  "  Westley  Richards  $  Co."  the  defendants  bought 
up  some  of  such  lock-plates  and  levers  belonging  to  con- 

1  This  case  is  distinctive  in  that  the     it  had  acquired  a  geographical  significa- 
narne  had  become  a  trade-mark  before     tion. 

248 


RODGERS  v.  RODGERS. 


demned  or  worn-out  guns,  and  made  them  up  with  parts  of 
other  guns  not  of  the  plaintiff's  make  into  complete  carbines. 

Injunction  granted  to  restrain  the  defendants  from  so  using 
such  lock-plates  and  levers. 


442.  Rodgers  v.  Rodgers. 
July  28,  1874.     James  and  Hellish,  L.  JJ.—S1  L.  T.  N.  S.  285. 

THE  plaintiffs  being  J.  Rodgers  &  Sons,  who  had  long  car- 
ried on  business  as  cutlers  in  Norfolk  Street,  Sheffield,  and 
stamped  their  goods,  among  other  marks,  with  their  name 
and  address,  the  defendants,  R.  Rodgers  &  Son,  also  carried 
on  business  as  cutlers  in  Sheffield,  and  they  and  their  pred- 
ecessor in  business  had  since  1861  described  their  place  of 
business  and  marked  their  cutlery  as  from  "  Norfolk  Works, 
Sheffield:' 

Action  for  an  injunction  to  restrain  the  defendants  from 
using  the  words  "  Norfolk  Works,"  or  "  Norfolk." 

Held,  that  the  injunction  must  be  refused,  on  .the  ground 
of  the  plaintiffs'  delay,  and  failure  to  produce  evidence  of 
actual  deception,  but  that  no  costs  of  the  cause  prior  to  the 
appeal  could  be  given,  on  account  of  the  defendants'  unfair 
dealing. 

Per  Hellish,  L.  J.  "  I  do  not  think  that,  as  a  matter  of  law,  the 
mere  fact  that  it  (the  title)  has  been  used  for  a  great  number  of  years 
necessarily  affords  a  defence.  If  it  was  clearly  made  out  that  it  was 
originally  used  for  the  purpose  of  fraud,  that  it  was  continued  for  the 
purpose  of  fraud,  and  that  it  has  the  practical  effect  of  deceiving  the 
public,  I  do  not  think  that  the  lapse  of  years  would  prevent  the 
plaintiffs  from  having  a  remedy."  "  In  my  judgment,  in  order  to 
make  out  a  clear  case  when  it  has  lasted  for  such  a  great  number  of 
years  as  this,  the  plaintiffs  ought  to  prove  satisfactorily  that  persons 
have  actually  been  deceived."  * 

1  An  explanation  of  this  decision  is  afforded  by  the  language  of  Lord  Jus- 
tice Hellish  above  quoted. 

249 


CONSOLIDATED  FRUIT  JAR  CO.  V.  DORFLINGER. 

443.  The  Glen  and  Hall  Manufacturing  Co.  v.  Hall. 

September,  1874.     N.  Y.  Sup.  Ct.  —  6  N.  Y.  Sup.  Ct.  (6  Lans.)  158.     N. 
Y.  Comm.  ofApp.  —  Ql  N.  Y.  (16  Sickels)  226;  19  Amer.  Rep.  278. 

THE  defendant  being  the  successor  in  business  of  Joseph 
Hall,  who  had  long  carried  on  business  at  No.  10  South 
Water  Street,  Rochester,  New  York,  began  in  February, 
1869,  to  use  in  his  hand-bills  the  words  "  The  Old  Joseph 
Hall  Agricultural  Works,  No.  10  South  Water  St.,  Rochester, 
N.  I7"."  In  September  or  October,  1869,  the  plaintiffs  opened 
their  establishment  in  the  same  street,  and  styled  themselves 
in  their  hand-bills,  etc.,  "  The  Grlen  and  Hall  Manufacturing 
Company,  No.  10  South  Water  St.,  Rochester,  New  York" 

Action  for  an  injunction  and  counter-claim.  Injunction 
granted  on  the  defendant's  counter-claim  to  restrain  the  plain- 
tiffs from  using  the  words  and  figures  "  No.  10."  l 


444.  Consolidated  Fruit  Jar  Co.  v.  Dorflinger. 

October,  1874.      U.  S.  C.  C.  E.  Dt.  of  Penn. :  Cadwallader,  J.  —  2  Am. 
L.  T.  N.  5.511. 

THE  plaintiffs  being  manufacturers  of  jars,  on  which  they 
placed  certain  trade-marks,  consisting  respectively  of  the 
words  "  Mason's  Patent,  November  30th,  1858,"  "  Mason's  Im- 
proved," "  The  Mason  Jar  of  1858,"  as  to  which  jars  the  pat- 
ent under  which  they  were  made  had  been  decided  to  be  in- 
valid, and  also  another  trade-mark,  consisting  of  the  words 
"  The  Mason  Jar  of  1872,"  not  open  to  the  same  objection, 
the  defendants  sold  other  jars  similarly  marked. 

On  motion  by  the  plaintiffs  for  an  injunction  to  restrain 
the  defendants  from  infringing  their  trade-marks  : 

Held,  that,  as  to  the  first  three  marks,  the  plaintiffs  were 
disentitled  by  reason  of  the  reference  to  the  invalid  patent  as 
if  it  were  valid  ;  but  that,  as  to  the  last  mark,  a  renewed  ap- 
plication might  be  made. 

"No  title  can  be  successfully  asserted  in  a  trade-mark  which  is  of 
1  See  Gillott  v.  Esterbrook,  269. 
250 


COTTON  V.  GILLARD. 


a  tendency  to  mislead  or  deceive  the  public.  This  objection  may 
avail  a  defendant,  notwithstanding  what  would  otherwise  be  imput- 
able  to  him  as  misconduct.  The  doctrine  is  that  the  complainant  must 
come  into  a  court  of  equity  with  clean  hands." 1 


445.  Morse  v.  "Worrell. 
(Afterwards  Morse  v.  Cornwell.) 

1874;  1875.     Phila.  C.P.  —  9  Am.  L.  Rev.  368;  Codd.  Dig.  242. 

THE  plaintiff  being  a  manufacturer  of  stove  polish,  on 
which  he  used  a  trade-mark  consisting  of  the  device  of  an  orb, 
with  rays  of  light,  rising  over  a  piece  of  water,  with  the  words 
" Rising  Sun  Stove  Polish"  the  defendant  sold  other  stove 
polish  with  a  very  similar  device,  with  the  words  "  Rising 
Moon  Stove  Polish" 

Injunction  granted  to  restrain  the  defendant  from  using 
the  device,  also  from  using  the  name  "  Rising  Moon"  and 
from  using  the  device  of  an  orb  rising  over  a  piece  of  water. 

446.  In  re  Godillot. 

November  16,  1874.     U.  S.  Patent  Office:  Spear,  Act.  Comm.  —  6  U.  S. 

Pat.  Goz.  641. 

APPLICATION  for  the  registration  of  a  label,  under  the  Act 
of  Congress  of  1874,  refused,  on  the  ground  that,  inasmuch 
as  it  possessed  all  the  characteristics  of  a  trade-mark,  it  could 
only  be  registered  as  such. 


447.  Cotton  v.  Gillard. 
November  24,  1874.     Jessel,  M.  R.  —  4A  L.  J.  Ch.  90. 

THE  defendant  having  invented  a  sauce  which  he  called  the 
"Licensed  Victuallers'  Relish"  and  placed  in  bottles  labelled 
with  a  view  of  the  Licensed  Victuallers'  Asylum,  the  sauce 
was  sold  at  first  by  the  defendant  and  his  partners  in  business, 
and  after  the  dissolution  of  partnership  (on  which  event  the 

1  See  Pidding  v.  How,  60. 

251 


TAYLOR  V.  GILLIES. 

recipes  and  formulas  used  by  the  defendant  reverted  to  him) 
by  the  defendant's  son,  who  also  bought  the  interest  of  the 
defendant's  former  partners  in  the  sauce.  The  son  becoming 
bankrupt,  his  interest  in  the  sauce  was  bought  by  the  plain- 
tiffs from  his  trustee  in  bankruptcy,  but  the  defendant  re- 
tained the  secret  recipe,  and  publicly  announced  his  claim  to 
the  title  and  trade-mark. 

Suit  for  an  injunction  to  restrain  the  defendant  from  using 
the  name  and  trade-mark.  Injunction  refused,  on  the  ground 
that  a  trade-mark  could  not  exist  or  be  transferred  in  gross, 
and  that  the  plaintiffs  were  not  entitled  to  apply  to  an  article 
of  their  own  invention  the  name  a,nd  mark  appropriated  to  an 
article  of  the  recipe,  of  which  they  were  ignorant,  the  result  of 
such  a  course  of  proceeding  being  to  pass  off  a  spurious  article 
on  the  public  as  the  genuine  one  of  the  defendant's  inven- 
tion.1 


448.  Taylor  v.  Gillies. 

December,  1874.     N.  Y.  C.  P.  — 5  Daly,  285.     N.  Y.  Ct.  ofApp.  —  59 
N.  Y.  (14  Sickels)  331 ;  17  Amer.  Rep.  333. 

THE  plaintiff  being  a  manufacturer  of  saleratus,  which  he 
sold  in  packages  labelled  "  Allen's  Gold  Medal  Saleratus" 
and  "  Taylor's  Gold  Medal  Saleratus"  the  defendants  began 
to  sell  the  same  article  in  packages  labelled  "  Gillies'  Crold 
Medal  Saleratus." 

Injunction  to  restrain  the  defendants  from  using  the  words 

"  Gold  Medal"  in  connection  with  their  saleratus,  refused,  on 

the  ground  that  no  exclusive  right  could  be  claimed  in  those 

words,  the  words  being  necessarily  descriptive  in  their  nature.2 

1  See  Pidding  v.  How,  60.  2  See  Batty  v.  Hill,  218. 

252 


WARD  V.  BEETON. 

449.  Estcourt  v.  The  Estcourt  Hop  Essence  Co. 

December  3,  1874;  January  21,  1875.  Malins,  V.  C.  —  31  L.  T.  N.  S.  567. 
Lord  Cairns,  C. ;  James  and  Hellish,  L.  JJ.  —  L.  R.  10  Ch.  276 ;  44  L.  J. 
Ch.  223;  32  L.  T.  N.  S.  80;  23  W.  R.  313. 

THE  plaintiffs  being  manufacturers  of  a  substitute  for  hops 
in  brewing,  which  they  called  "  Estcourfs  Hop  Supplement" 
the  defendant  company  began  to  sell  another  article  as  "  Est- 
court and  Co.'s  Hop  Essence." 

Suit  by  the  plaintiffs  for  an  injunction  to  restrain  the  de-' 
fendants  from  using  the  name  "  Estcourt"  and  from  using  the 
secret  of  the  "  Hop  Supplement"  which  they  alleged  to  have 
been  communicated  to  the  defendants  by  the  defendant  C. 
Estcourt,  who  had  been  in  connection  with  the  plaintiffs. 

Held,  on  appeal :  (1.)  that  the  defendant,  C.  Estcourt,  was 
under  no  obligation  to  keep  the  plaintiffs'  secret,  and,  further, 
that  it  was  not  proved  that  the  defendant  company  had  ob- 
tained their  knowledge  from  him  ;  (2.)  that  the  plaintiffs  were 
disentitled  to  obtain  an  injunction  by  having  delayed  to  take 
proceedings  for  seven  months  after  they  became  aware  of  the 
assumption  of  the  name  "  Estcourt "  by  the  defendant  com- 
pany, and  failing  even  after  that  period  to  produce  evidence 
of  actual  deception  ;  (3.)  that  both  parties  being  engaged  in 
an  improper  speculation,  and  the  defendant  company  having 
made  statements  in  their  advertisements  calculated  to  lead  to 
the  belief  that  they  were  the  original  inventors  of  the  article, 
the  bill  must  be  dismissed  without  costs.1 


45O.  Ward  v.  Beeton. 
December  21,  1874.     Malins,  V.  C.  —  L.  R.  19  Eq.  207;  23  W.  R.  533. 

THE  defendant's  copyrights,  stock  in  trade,  etc.,  as  a  pub- 
lisher (including  a  publication  called  "Beeton's  Christmas 
Annual  "),  having  been  purchased  by  the  plaintiffs  in  1866,  in 
1869  the  defendant  entered  into  an  agreement  with  the  plain- 
tiffs, under  which  he  was  to  enter  into  the  plaintiffs'  service 

1  See  McLean  v.  Fleming,  580  ;  Pidding  v.  How,  60. 

253 


BROUGHTON  V.  BROUGHTON. 

at  a  salary,  and  to  give  all  his  time  to  their  business,  and  was 
not  to  permit  the  use  of  his  name  in  publications  without  the 
consent  of  the  plaintiffs,  who  were  to  have  the  right  to  use  it. 
The  plaintiffs  and  defendant  having  disagreed,  the  plaintiffs 
caused  the  Annual  for  1874  to  be  prepared  without  the  de- 
fendant's assistance,  upon  which  the  defendant  put  forth  ad- 
vertisements denying  that  such  Annual  was  in  continuation  of 
his  series,  and  stating  that  the  genuine  Annual  was  one  which 
was  being  prepared  by  persons  other  than  the  plaintiffs. 

Motion  by  the'  defendant  to  dissolve  an  injunction  which 
had  been  granted  to  restrain  the  publication  of  such  advertise- 
ments refused,  on  the  ground  that  the  plaintiffs  had  a  right 
to  use  the  title,  notwithstanding  that  the  defendant  had  not 
prepared  the  work,  and  that  the  defendant's  conduct  was  con- 
trary to  his  engagement. 

P.  216.  "  When  you  sell  a  newspaper,  it  is  not  merely  the  right 
to  sell  one  number  of  it,  but  continuing  to  publish  it  from  day  to  day, 
it  may  be  as  long  as  the  world  lasts,  under  the  name  by  which  it  has 
become  -known." 1 

451.  Broughton  v.  Broughton. 
May  25,  1875.     Jessel,  M.  R.—  44  L.  J.  Ch.  526  ;  23  W.  R.  779. 

G.  BROUGHTON  and  the  defendant  having  carried  on  busi- 
ness in  partnership,  at  the  death  of  the  former  the  partnership 
was  insolvent,  but  the  defendant,  being  also  G.  Broughton's 
executor,  carried  on  the  business  alone  with  such  success  that 
he  subsequently  sold  it  for  £1,700. 

Suit  for  the  administration  of  G.  Broughton's  estate. 

Held,  that  the  defendant  was  only  chargeable  with  the  value 
of  a  moiety  of  the  business  at  the  time  of  the  testator's  death, 
and  not  at  the  time  of  the  sale  of  the  business. 
1  See  Hogg  v.  Kirby,  10. 

254 


HARTER  V.  SOTJVAZOGLTL 


452.  Bulloch,  Lade  &  Co.  v.  Gray. 

January  6,  1875.    Guthrie,  Sheriff"  Subs.  ;  Dickson,  Sheriff"  of  Lanarkshire. — 
19  Journ.  of  J wisp.  218. 

CROSS  suits  by  two  rival  firms  of  distillers  at  Glasgow,  of 
whom  the  one  firm  called  their  establishment  "  The  Loch  Ka- 
trine Distillery"  and  the  other  called  their  whiskey  " Loch 
Katrine  Whiskey"  for  interdicts  to  restrain  the  respective  de- 
fendants from  using  the  words  "  Loch  Katrine" 

Interdict  in  both  cases  refused,  on  the  ground  that  in  each 
case  the  word  was  used  as  descriptive  of  the  water  used  in  the 
distillery,  and  that  any  one  who  used  Loch  Katrine  water  in 
the  manufacture  of  his  whiskey  was  at  liberty  to  state  that 
such  was  the  fact.1 


453.  Prudential  Assurance  Co.  v.  Knott. 

January  20,  1875.     Lord  Cairns,  C.;  James  and  Mellish,  L.  JJ. —  L.  R. 
10  Ch.  142;  44  L.  J.  Ch.  192;  31  L.  T.  N.  S.  866 ;  23  W.  R.  249. 

SUIT  for  an  injunction  to  restrain  the  publication  of  a  pam- 
phlet alleged  to  contain  passages  injurious  to  the  plaintiff  com- 
pany's reputation  and  business. 

Held,  that  the  Court  of  Chancery  had  no  jurisdiction  to  re- 
strain the  publication  of  a  libel,  even  when  injurious  to  prop- 
erty. 

454.  Harter  v.  Souvazoglu. 

January  20,  1875.     Hall,  V.  C.—W.N.  1875,  p.  11;  Z.  J.  Notes  of  Cos. 
1875,  p.  20.     James  and  Mellish,  L.  JJ.  —  W.  N.  1875,  p.  101. 

THE  plaintiffs  being  exporters  of  cotton  cloths  to  Turkey 
and  the  Levant,  who  affixed  to  their  cloths  a  certain  heading 
consisting  of  different  colored  threads  in  combination,  the 
defendants  shipped  similar  goods  to  Constantinople  with  a 
similar  heading. 

1  This  decision  would  seem  to  pro-  whiskey  is  not  always  the  pure  juice  of 
ceed  upon  the  assumption  that  Scotch  the  grain. 

255 


WESTON  V.  KETCHAM. 


Injunction  granted  to  restrain  the  defendants  from  infring- 
ing the  plaintiffs'  trade-mark.1 


455.    Western  v.  Ketcham.     (1.) 
February  1,  1875.     N.  Y.  Super.  C7.  —  39  N.  Y.  Super.  Ct.  (7  J.  §•  S.)  54. 

THE  inventor  of  "  Captain  S.  Pepper's  Extra  Signal  Oil  " 
(the  secret  of  which  preparation  was  only  known  to  himself, 
his  wife,  and  the  plaintiff  Weston)  arranged  with  the  de- 
fendant Ketcham  for  the  sale  by  the  latter  of  his  oil,  on 
terms  of  equal  profits ;  and,  after  Pepper's  death,  Weston 
and  Ketcham  entered  into  a  similar  arrangement  as  "  F.  0. 
Ketcham  $•  Co."  one  tenth  of  the  profits  being  paid  to  Pep- 
per's widow  in  return  for  her  interest  in  the  trade-mark. 
Weston  subsequently  arranged  with  the  widow  for  the  cancel- 
lation of  the  previous  agreement  with  her,  and  the  substitu- 
tion of  an  exclusive  agreement  with  himself,  for  an  annual 
sum,  contrary  to  the  wishes  of  his  then  partners,  Ketcham 
and  another,  who  had  instructed  him  to  negotiate  on  behalf 
of  the  partnership  ;  but  the  partnership  continued  to  deal  in 
the  article  under  the  same  name,  the  annual  payments  being 
made  out  of  the  partnership  funds,  until  the  dissolution  of 
the  partnership  two  years  later.  After  such  dissolution  the 
plaintiffs,  being  Weston  and  the  third  partner  in  the  old  firm, 
continued  to  manufacture  the  same  article  under  the  same 
name  and  trade-mark,  as  "  Weston  $  Fisk,"  and  the  defend- 
ants, Ketcham  and  another,  who  were  not  acquainted  with 
the  secret,  also  manufactured  an  article  under  the  same  name 
and  trade-mark,  as  "  F.  0.  Ketcham  £  Co." 

Injunction,  which  had  been  granted  to  restrain  the  use  of 
the  name  and  trade-mark  by  the  defendants,  dissolved,  on  the 
ground,  that,  (1.)  under  the  circumstances  of  the  case,  Wes- 
ton's  partners  in  the  original  firm  of  "  F.  O.  Ketcham  &  Co." 
were  entitled  to  treat  him  as  a  trustee  for  them  of  the  rights 
which  he  had  acquired  under  the  new  arrangement  with  Pep- 
per's widow ;  (2.)  that  they  were  not  debarred  from  enforc- 

1  See  Williams  v.  Johnson,  150. 

256 


FISHER  &  CO.  V.  THE  APOLLINARIS  CO. 

ing  their  right  by  acquiescence,  since  they  were  at  a  disad- 
vantage, in  that  Weston  alone  knew  the  secret,  and  were, 
therefore,  compelled  to  submit ;  (3.)  that  on  the  dissolution 
of  Ketcham  &  Co.  all  the  partners  retained  equal  rights  in 
the  trade-marks,  etc.,  of  the  firm  ;  (4.)  and  that  the  fact  that 
the  defendants  were  not  acquainted  with  the  secret  gave  no 
rights  against  them  to  the  plaintiffs,  whose  right  in  the  trade- 
mark was  only  equal  to  theirs  ;  whatever  remedy  might 
be  open  to  any  member  of  the  public  who  was  deceived  by 
them. 


456.  In  re  Rothschild. 

February  13,  1875.     U.  S.  Patent  Office  :    Spear,  Act.  Comm.  —  7    U.  S. 

Pat.  Gaz.  220. 

ON  an  application  for  registration  of  a  trade-mark  : 
Held,  that  under  the  U.  S.  Statute  of  1870,  a  new  trade- 
mark, which  had  been  devised  and  originated  by  the  appli- 
cant, might  be  registered,  although  it  had  not  been  actually 
used  by  him  previous  to  his  application  for  registration. 


457.  Fisher  &  Co.  (Limited)   v.  The  Apollinaris  Co. 
(Limited). 

February  25,  March  23,  1875.  Malins,  V.  C.—  L.  R.  10  Ch.  299  n.;  32 
L.  T.  N.  S.  628.  James  and  Mellish,  L.  JJ.  —  L.  R.  10  Ch.  297;  44  L. 
J.  Ch.  500;  32  L.  T.  N.  S.  628;  23  W.  R.  460. 

SUIT  by  Fisher  &  Co.  (limited),  and  E.  Fisher,  whose  busi- 
ness had  been  bought  by  the  company,  for  an  injunction  to 
restrain  the  defendants  from  continuing  to  publish  a  letter  of 
apology  which  had  been  given  them  by  E.  Fisher,  in  order  to 
induce  them  to  discontinue  prosecuting  him  under  the  Mer- 
chandise Marks  Act,  1862,  for  selling  spurious  aerated  water 
in  the  Apollinaris  Co.'s  bottles,  such  continued  publication 
being  injurious  to  the  plaintiff  company. 

Held,  on  demurrer,  by  the  L.  JJ.,  that  there  was  nothing 
improper  in  compromising  a  prosecution  under  the  act  in 
17  257 


WILSON  V.  MAXFIELD. 


question,  and  that  the  defendants  could  not   be  restrained 
from  continuing  to  publish  the  letter. 


458.  Smith  v.  Mason. 

March  4,  1875.     Hall,  V.  C.—  W.  TV.  1875,  p.  62  ;   L.  J.  Notes  of  Cos. 

1875,^.44. 

THE  plaintiff  being  a  chemist  and  druggist,  who  sold  a 
medicine  of  his  invention  under  the  name  of  "  Pectorine" 
the  defendant  began  to  sell  another  preparation  under  the 
same  name. 

On  motion  by  the  plaintiff  injunction  granted  to  restrain 
the  defendant  from  so  doing. 


459.  Wilson  v.  Maxfield. 
March  15,  1875.     Malins,  V.  C.  —  L.  J.  Notes  of  Cas.  1875,  p.  51. 

THE  plaintiff  being  a  sewing-machine  manufacturer,  who 
had  stamped  a  figure  of  St.  George  and  the  Dragon  upon  cer- 
tain sewing-machines  made  by  him,  and  known  as  "  England's 
Queen,"  but  who  had  not  used  the  device  on  bill-heads  or  cir- 
culars, or  generally  in  his  business,  before  bill  filed,  the  de- 
fendant, who  had  formerly  been  in  the  plaintiff's  employ, 
placed  on  machines  of  his  own  make,  and  on  his  circulars,  a 
device  of  St.  George  and  the  Dragon,  with  the  words  *'  Max- 
field  $•  (70. 's  trade-mark." 

Injunction  to  restrain  the  defendant  from  using  the  device 
refused,  on  the  ground  that  the  plaintiff  had  acquired  no  rep- 
utation for  the  mark  by  use,  and  that  there  was  no  attempt 
by  the  defendant  to  deceive  or  probability  of  deception.1 

1  Under  the  English  cases,  there  must  would  seem  to  be  to  the  effect  that  as 

be  something  more  than  a  mere  adop-  soon  as  the  mark  is  applied  it  becomes 

tion   and  application  of  a    trade-mark  the  property  of  him  who  is  the  first  to 

to  create  an  exclusive  right  at  common  formally  make  the  application.  Browne 

law.     The  American   cases,  however,  on  Trade-Marks,  §  52. 

258 


GODILLOT  v.  HAZARD. 

460.  Gouraud  v.  Trust. 
March,  1875.     N.  Y.  Sup.  Ct.  —  10  N.  Y.  Sup.  Ct.  (3  Hun)  627. 

THE  plaintiff,  whose  name  had  formerly  been  "  Dr.  J.  W. 
Trust,"  but  had  been  changed  to  "  Dr.  T.  F.  Gouraud,"  be- 
ing the  manufacturer  of  a  cosmetic  which  he  called  "  Grou- 
raucTa  Oriental  Cream  or  Magical  Beautifier"  the  defendants, 
his  sons,  who  had  retained  their  original  name,  began  to  sell 
a  cosmetic  under  the  name  of  "  Creme  Orientale,  by  Dr.  T. 
F.  G-ouraud's  Sons" 

Injunction  granted  to  restrain  the  defendants  from  so  in- 
fringing the  plaintiff's  rights,  on  the  ground  that  the  state- 
ment of  the  defendants'  relationship  to  the  plaintiff,  though 
true,  was  made  with  the  intention  of  deceiving,  and  was  cal- 
culated to  deceive.1 


461.  Godillot  v.  Hazard. 
April,  1875.    N.  Y.  Super.  Ct. :  Monell,  C.  J.  —49  How.  Pr.  5. 

THE  plaintiff  being  an  importer  of  an  article  made  ex- 
pressly for  him  by  a  particular  firm  in  Paris,  consisting  of 
compressed  ingredients  for  Julienne  soup,  and  which  he  sold 
under  a  label  containing  the  words  "  Conserves  Alimentaires" 
the  arms  of  the  city  of  Paris,  with  a  monogram  "  A.  <7."  on 
each  side,  and  the  words  '•'•Paris"  and  "Julienne"  with 
directions  for  use,  beneath;  the  defendants  began  to  sell  a 
similar  article  under  a  similar  label,  except  that  the  mono- 
gram was  changed  to  "  F.  G-.  ;  "  and  they  admitted  that  their 
label  had,  by  their  orders,  been  copied  from  the  plaintiff's. 

Suit  for  an  injunction  to  restrain  the  defendants  from  in- 
fringing the  plaintiffs  rights. 

Held,  (1.)  that  the  plaintiff  had  no  exclusive  right  in  the 
word  "  Julienne,  per  se,  that  word  being  descriptive  of  an  ar- 
ticle commonly  made ;  (2.)  but  that  the  plaintiff  was  entitled 
to  an  injunction  to  restrain  the  use  of  his  compound  label  by 
the  defendants  ;  (3.)  and  that  the  fact  that  the  plaintiff  did 
1  See  Let.  v.  Haley,  325. 
259 


LLEWELLYN  V.  RUTHERFORD. 

not  himself  manufacture  the  article  constituted  no  defence, 
since  the  article  was  expressly  made  for  and  imported  by  him. 

"  The  property  and  right  to  protection  is  in  the  device  or  symbol 
which  is  invented  and  adopted  to  designate  the  goods  to  be  sold,  and 
not  in  the  article  which  is  manufactured  and  sold." 1 


462.  Llewellyn  v.  Rutherford. 

May  5,  1875.     Common  Pleas.  —L.  R.  10  C.  P.  456;  44  L.  J.  C.  P.  281; 
32  L.  T.N.  S.  610. 

Held,  that  the  sum  which  an  outgoing  tenant  of  a  public- 
house  was  entitled,  under  agreement,  to  receive  on  the  ter- 
mination of  his  lease,  as  the  value  of  the  good-will,  must  be 
determined  by  a  calculation  of  the  sum  which  an  incoming 
tenant  would  be  willing  to  pay  for  the  good-will  in  such  a 
case,  and  that  a  general  rise  in  the  value  of  property  in  the 
neighborhood  should  be  taken  into  consideration. 

Per  Brett,  J.  "  In  some  classes  of  business,  when  the  trade  has 
long  been  carried  on  in  a  profitable  manner  in  a  particular  house,  and 
a  new  tenant  comes  in  and  continues  to  carry  on  the  same  business 
there,  it  is  found  by  experience  that  many,  if  not  all,  of  the  customers 
resort  there  as  before.  This  is  found  so  regularly  to  happen  that  it 
has  become  usual  to  pay  a  money  value  for  it,  which  is  commonly 
called  '  good-will.'  It  may  be  that  there  may  be  a  species  of  good- 
will which  may  be  the  subject  of  bargain  and  sale,  although  not  de- 
pendent on  the  business  being  carried  on  in  any  particular  place  :  for 
instance,  in  the  case  of  what  are  called '  quack  medicines.'  But  when 
we  come  to  speak  of  the  good-will  of  a  public-house,  it  is  obvious  that 
it  is  a  thing  which  is  attached  to  a  locality." 

1  The  decision  in  this  case  was  af-  that  a  mark  used  to   denote  that  the 

firmed  upon  appeal  by  the  unanimous  goods  on  which  it  is  used  are  the  selec- 

opinion  of  the  court  of  last  resort  of  tion  of  a  merchant  will  be  protected. 
New  York.    There  can  be  no  doubt 

260 


IN  BE  HANKINSON. 

463.  Devlin  v.  Devlin. 

May,  1875;  April  3,  1877.     N.  Y.  Sup.  Ct.  —  ll  N.  Y.  Sup.  Ct.  (4  Hun) 
651.  N.  Y.  Ct.  ofApp.  —  69  N.  Y.  (24  Sickels)  212;  15  Alb.  L.  J.  290. 

THE  plaintiffs  being  engaged  in  the  clothing  business  as 
"  Devlin  $•  Co."  the  defendant,  J.  S.  Devlin,  who  carried  on 
the  same  business  alone,  put  out  a  wire  sign  in  front  of  his 
shop,  bearing  the  words  "  Devlin  $  (70.,"  with  the  letters  "<7. 
$."  in  a  monogram  above,  the  number  of  the  shop,  "826" 
on  each  side,  and  the  word  "  clothing  "  below. 

An  injunction  having  been  granted  to  restrain  the  defend- 
ant from  using  the  name  "  Devlin  £  Go."  and  from  continu- 
ing to  use  such  sign,  and  from  trading  in  any  other  name  than 
his  own  Christian  names  and  surname,  in  plain  characters  and 
without  monograms,  the  defendant,  upon  service  of  the  order, 
so  varied  his  sign  that  it  now  contained  the  initials  "  J.  S." 
with  "826"  on  each  side  in  the  top  line,  "Devlin's"  with  a 
hand  in  the  middle,  and  "  clothing"  in  the  bottom  line. 

On  motion  by  the  plaintiffs  to  commit  the  defendant  for 
breach  of  the  injunction  :  Held,  by  the  Supreme  Court,  that 
the  defendant  had  not  sufficiently  obeyed  the  injunction,  and 
was,  therefore,  guilty  of  contempt,  and  that  a  fine  must  be 
imposed  and  the  sign  removed. 

Held,  by  the  Court  of  Appeals,  that  the  decision  of  the  Su- 
preme Court  on  a  point  of  fact  must  be  followed,  but  that  the 
case  was  sufficiently  open  to  doubt  for  no  costs  of  the  appeal 
to  be  given  to  either  party.1 


464.  In  re  Hankinson. 

June  2,  1875.     U.  S.  Patent  Office:  Thacher,  Comm.—8   U.  S.Pat.  Gaz- 

89. 

APPLICATION  by  a  carpet-cleaner,  who  used  a  certain  mark 
on  his  wagons,  circulars,  etc.,  and  on  tags  attached  to  the 
carpets,  for  the  registration  of  such  mark  as  his  trade-mark, 
refused,  on  the  ground  that  the  marks  of  manufacturers  or 

1  See  Burgess  v.  Burgess,  117. 

261 


BLACKWELL  V.  WRIGHT. 


merchants  were  alone  registrable  within  the  U.  S.  Statute  of 
1870,  and  that  the  applicant  was  incapable  of  specifying,  in 
accordance  with  that  statute,  the  class  and  description  of  goods 
or  merchandise  to  which  the  mark  was  appropriated. 


465.  The  Apollinaris  Company  (Limited)  v.  Norrish. 
June  3,  1875.    Bacon,  V.  C.  —  S3  L.  T.  N.  S.  242. 

THE  plaintiffs  being,  by  agreement  with  the  owners  of  the 
Apollinaris  Spring  in  Germany,  the  exclusive  importers  of 
"Apollinaris  Water"  into  England,  the  defendants  sold  an 
artificial  water,  containing  the  same  chemical  constituents  as 
the  natural  water,  as  "  London  Apollinaris  Water,"  but  in 
different  bottles,  differently  labelled,  from  those  of  the  plain- 
tiffs. 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendants  from  using  the  name  "  London  Apollinaris 
Water,"  or  making  any  other  use  of  the  name  "  Apollinaris  " 
calculated  to  deceive.1 


466.  Blackwell  v.  "Wright. 
June,  1875.     No.  Carolina  Sup.  Ct.  —  73  N.  Car.  310. 

THE  plaintiff  being  a  manufacturer  of  tobacco  at  Durham, 
North  Carolina,  whose  trade-mark  consisted  of  the  figure  of  a 
bull,  with  the  words  "  Genuine  Durham  Smoking  Tobacco, 
Manufactured  only  by  W.  T.  Blackwell  (successor  to  J.  R. 
Crreen  £  Co.,  Durham,  N.  C."  the  defendant  used  a  trade- 
mark consisting  of  the  figure  of  a  bull's  head,  arranged  to 
occupy  the  central  part  of  a  circular  design,  and  the  words 
"  The  Original  Durham  Smoking  Tobacco,  Manufactured  by 
W.  A.  Wright,"  and  published  various  denials  of  the  exclu- 
sive right  of  the  plaintiff  to  sell  "  Grenuine  Durham  Smoking 
Tobaceo." 

Action  for  damages,  and  for  an  injunction  to  restrain  the 

1  See  Congress,  etc.  Spring  Co.  v.  High  Rock  Congress  Spring  Co.  354 ;   Apol- 
linaris Co.  v.  Moore. 

262 


BLACKWELL  V.  WRIGHT. 

defendant  from  infringing  the  plaintiff's  trade-mark,  and  slan- 
dering his  title. 

Demurrer  allowed,  and  injunction  refused,  on  the  ground 
that  there  was  no  such  similarity  between  the  marks  as  to  be 
calculated  to  produce  deception. 

Per  Bynum,  J.  "  This  rule  (i.  e.  that  of  the  protection  of  trade- 
marks) is  grounded  upon  a  twofold  reason :  1st,  that  the  public  may 
be  protected  from  being  imposed  upon  by  a  spurious  or  inferior  arti- 
cle, as  an  imitation  or  counterfeit  almost  always  is ;  and,  2d,  that  the 
inventor  may  have  the  exclusive  benefit  of  the  reputation  which  his 
skill  has  given  to  the  article  made  by  him." 

"  It  will  make  no  difference  whether  the  party  designed  to  mislead 
the  public,  or  whether  the  symbol  adopted  was  calculated  to  deceive. 
But  if  it  appear  that  the  trade-mark  alleged  to  be  imitated,  though 
resembling  the  complainant's  in  some  respects,  would  not  probably 
deceive  the  ordinary  mass  of  purchasers,  an  injunction  will  not  be 
granted.  An  imitation  is  colorable,  and  will  be  enjoined,  which 
requires  a  careful  inspection  to  distinguish  its  mark  and  appearance 
from  that  of  the  manufacture  imitated." 

"  We  must  assume  that  dealers  and  consumers  of  such  a  commodity 
have  ordinary  intelligence,  and  adopt  ordinary  precaution  against 
imposition  and  fraud."  1 

1  See   Blackwell  v.   Armistead,  392.  to  deceive  the  unwary  customer,  differs 

In  that  case,  which  was  decided  by  a  from  an  absolute  forgery,  not  in  the 

federal  court  Judge   Rives   very   ably  nature,  but  rather  in  the  extent  of  the 

formulates  the  doctrine  of  infringement  injury.     The  dissimilarity  to  the  expert 

as  follows :  —  wholesale  dealer  may  be  such  as  to  save 

"  The  doctrine  on  this  subject  has  him  from  the  imposition,  but  too  slight, 

grown  with  commerce ;  so  much  of  it  and  that  perhaps  by  design,  to  diminish 

as  is  necessary  or  material  for  our  pres-  sales  to  the  incautious  purchaser.   But 

ent  inquiry  is  comprehended  in  a  single  upon  the  success  of  fraud  depends  ulti- 

proposition.     It  is  the  seminal  princi-  mately  the  extent  of  the  injury." 

pie  of  the  whole  doctrine.    The  simple  Concerning  the  principal  case  it  is  to 

statement  of  it  is,  that  the  dealer  has  be  remarked  that  at  the  time  it  was 

property  in  his  trade-mark.     This  is  al-  decided,  the  word  "  Durham  "  had  been 

lowed  him  because  of  the  right  which  adjudged  to  be  publici  juris  in  respect  of 

every  man  has  to  the  rewards  of  his  the  residents  of  that  place,  a  circum- 

industry  and  the  fruits  of  his  discovery,  stance  which  probably  reduced  the  ques- 

and  because  of  the  wrong  of  permit-  tion  of  infringement  to  a  comparison 

ting  one  man  to  use  as  his  own  that  of  the  two  symbols.     In  the  absence  of 

which  belongs  to  another.    In  regard  to  proof  of  actual  mistake,  or  other  evi- 

the  latter,  it  may  be  well  said  that  any  dence  of  probability  of  confusion  in  the 

imitation  of  a  trade-mark,  calculated  market,  the  conclusion  arrived  at  was 

263 


IN  KB  VOLTA  BELT  CO. 

467.  "Wood  v.  Sands. 

1875.     U.  S.  C.  C.  Dt.  of  III  —  Codd.  Dig.  50. 

THE  plaintiff,  who  had  established  and  gained  a  reputation 
for  a  hotel  at  Chicago  under  the  name  of  "  Wood's  Hotel" 
assigned  his  interest  therein  to  another  person,  with  the  ex- 
clusive use  of  his  name,  and  a  covenant  not  to  open  another 
hotel  during  the  remainder  of  the  lease.  During  the  continu- 
ance of  such  arrangement  the  hotel  was  burnt  down,  and  the 
plaintiff  having  subsequently  repurchased  the  right  to  the  use 
of  the  name  "  Wood's  Hotel"  and  opened  a  hotel  under  that 
name  in  a  different  situation,  the  defendant  opened  a  new 
hotel  in  Chicago  as  "  Wood's  Hotel"  and  announced  the  re- 
opening of  that  hotel. 

Action  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendant  from  using  the  name.  Held,  (1.)  that  the  name 
was  capable  of  assignment,  at  all  events  for  use  in  connection 
with  the  premises  to  which  it  was  attached ;  (2.)  that  it  had 
passed  to  the  plaintiff  under  the  reassignment  from  his  as- 
signee, and  that  he  was  entitled  to  the  benefit  of  whatever 
value  it  possessed  ;  (3.)  that  the  injunction  must  be  granted 
to  restrain  the  defendant  from  using  the  name.1 


468.   In  re  Volta  Belt  Co. 

June  26,  1875.     U.  S.  Pat.  Office:  Thacher,  Comm.  —  S  U.  S.  Pat.  Gaz. 

144. 

ON  an  application  for  the  registration  of  a  trade-mark,  con- 
sisting of  a  globe  surrounded  by  clouds,  from  which  lightning- 
flashes  proceeded,  with  the  words  '•'•Electricity  is  life  :"  Held, 
that  a  description  of  the  mark  in  the  statement  on  applica- 
tion, as  being  "a  symbol,  consisting  of  the  words  '•Electricity 
is  Life,  placed  beneath  clouds,  from  which  lightning-flashes 

a  necessary  one,  and  cannot  be  taken  of  Judge  Bynum  which  are  quoted  will 

to  negative  the  earlier  case,  or  to  affect  not  bear  critical  examination, 

the  lucid  reasoning  of  Judge  Rives.  See  Amoskeag  Man.  Co.  v.  Spear,  100. 

It  is  plain  that  some  of  the  remarks  l  See  Howard  v.  Henriques,  108. 

264 


IN  RE  BOEHM  &  CO. 


proceed,  the  whole  arranged  generally  as  shown  in  the  fac- 
simile" was  insufficient,  as  not  clearly  distinguishing  between 
the  essential  and  non-essential  parts  of  the  mark  claimed,  and, 
in  particular,  making  no  mention  whatever  of  the  globe. 


469.   In  re  Vidvard  and  Sheehan. 

June  29,  1875.     U.  S.  Patent  Office:  Thacher,  Comm.  —  8  U.  S.  Pat.Gaz. 

143. 


an  application  for  the  registration  of  a  trade-mark  : 
Held,  that  the  requirement  of  the  U.  S.  Statute  of  1870, 
that  a  declaration  should  be  made  on  oath  "  to  the  effect  that 
the  party  claiming  protection  for  the  trade-mark  has  a  right 
to  the  use  of  the  same,  and  that  no  other  person,  firm,  or  cor- 
poration has  a  right  to  such  use,  either  in  the  identical  form, 
or  having  such  near  resemblance  thereto  as  might  be  calcu- 
lated to  deceive,"  was  sufficiently  complied  with  by  a  decla- 
ration that  "  no  other  person,  firm,  or  corporation  has  a  right 
to  the  use  of  the  said  trade-mark,  or  of  one  substantially  the 
same." 


470.   In  re  Boehm  &  Co. 

August  24,  1875.     U.  S.  Patent  Office:  Spear,  Act.  Comm.—8  U.  S.  Pat. 

Gaz.  319. 

ON  an  application  for  the  registration  of  the  word  "  Cen- 
tennial "  as  a  trade-mark  in  respect  of  "  alcoholic  spirits  :  " 

Held,  that  such  an  application  for  the  general  class  of  goods 
was  sufficient,  and  that  it  was  not  necessary  to  make  separate 
applications  in  respect  of  the  several  kinds  of  goods  included 
in  the  class  on  which  it  was  intended  to  use  the  mark,  i.  e. 
"  Bourbon,  wheat,  and  rye  whiskeys,  wines,  brandies,  gins, 
and  bitters,"  except  as  to  the  last,  "  bitters,"  not  being  prop- 
erly included  in  the  term  "  alcoholic  spirits." 

265 


IN  RE  GREEN. 

471.  In  re  Glines. 

1875.  U.  S.  Patent  Office  :  Spear,  Act.  Comm.  —  8  U.  S.  Pat.  Gaz.  435. 
THE  words  "  Slate  Roofing  Paint "  admitted  to  registration 
as  a  trade-mark  on  paint,  on  the  ground  that,  though  the 
words  might  be  suggestive  of  qualities  of  the  paint,  they 
were  not,  properly  speaking,  descriptive  of  its  composition 
or  use. 

472.   Meneely  v.  Meneely. 

September,  1875.  N.  Y.  Sup.  Ct.—N.  Y.  Sup.  Ct.  (1  Hun)  663;  2 
Thomp.Sf  C.  540.  N.  Y.  Ct.  ofApp.  —  62N.  Y.  (17  Sickels)  427  ; 
20  Amer.  Rep.  489;  2  Am.  L.  T.  N.  S.  482. 

THE  plaintiffs  and  their  predecessors  in  business  having 
long  manufactured  bells  at  Troy,  New  York,  and  sold  them 
with  the  inscription  cast  on  them,  "  Meneely 's,  West  Troy, 
N.  Y."  the  defendants  made  bells  at  the  same  place,  and 
stamped  them  "  Meneely  and  Kimberly,  Troy,  N.  Y." 

Injunction  to  restrain  the  defendants  from  using  the  name 
"  Meneely  "  on  their  bells  refused,  on  the  ground  that  the  de- 
fendants were  entitled  to  use  their  own  names  without  fraud, 
and  that  no  attempt  at  fraud  was  proved. 

Per  Rapallo,  J.  (62  N.  Y.  427).  "  Every  man  has  the  absolute  right 
to  use  his  own  name  in  his  own  business,  even  though  he  may  thereby 
interfere  with  or  injure  the  business  of  another  person  bearing  the 
same  name,  provided  he  does  not  resort  to  any  artifice  or  contrivance 
for  the  purpose  of  producing  the  impression  that  the  establishments 
are  identical,  or  do  anything  calculated  to  mislead.  Where  the  only 
confusion  created  is  that  which  results  from  the  similarity  of  the 
names,  the  courts  will  not  interfere."  1 

473.  In  re  Green. 

September  27,  1875.     U.  S.  Patent  Office:  Spear,  Act.  Comm.  —  8   U.  S. 

Pat.  Gaz.  729. 

THE  words  "  German  Sirup  "  admitted  to  registration  as 
a  trade-mark,  on  the  ground  that  the  word  "  German  "  was 

1  See  Burgess  v.  Burgess,  117. 

266 


THE  IXDIA-RUBBER  COMB  CO.  V.  MEYER. 

not  used  as  descriptive  of  a  German  product,  but  was  a  purely 
arbitrary  term.1 


474.  The  Tucker  Manufacturing  Co.  v.  Boyington. 

October,   1875.     U.  S.  C.  C.  Dt.  of  N.  Ill :   Blodgett,  J.  —  9  U.  S.  Pat. 

Gaz.  455. 

THE  plaintiff  company  manufacturing  the  "Tucker  Spring- 
Bed  "  under  an  expired  patent,  and  having  registered  a  trade- 
mark consisting  of  a  picture  of  the  bed,  the  monogram  "  T.  M. 
Co."  and  the  words  "  Tucker  Spring-Bed"  the  defendant 
manufactured  a  similar  bed,  and  used  a  label  containing  a 
picture  of  the  bed  and  the  words  "  Tucker  Spring-Bed" 

Motion  by  the  plaintiffs  for  an  injunction  to  restrain  the 
defendant  from  infringing  the  plaintiffs'  rights  refused,  on 
the  ground  that  the  right  to  use  the  name  and  represent  the 
bed  had  become  common  property  on  the  expiration  of  the 
patent,  and  that  the  combination  registered  by  the  plaintiff 
company  had  not  been  used  by  the  defendant,  except  as  to 
such  elements  as  were  common  property.2 


475.  The  India-Rubber  Comb  Co.  v.  Meyer. 
1875.     N.  Y.  Super.  Ct.  —  Cited  8  U.  S.  Pat.  Gaz.  905. 

THE  plaintiff  company  placing  the  words  "  The  India- 
Rubber  Comb  Co."  on  combs  and  cases  or  packages  of  combs, 
the  defendant  used  the  same  words  on  other  combs,  cases,  etc. 

Injunction  granted  to  restrain  the  defendants  from  infring- 
ing the  plaintiffs'  corporate  name.3 

1  It  is  difficult  to  understand  the  logic  vious  that  the  German  manufacturer 

of  this  decision.     The  theoretical  effect  would    have   the   better  right    to    the 

of  registration  was  to  confer  an  exclu-  word,  although  not  an  exclusive  right, 

sive   right ;  plainly  the  registrant  here  2  See  Singer  Man.   Co.  v.    Wilson, 

could  hardly  hope  to  maintain  the  exclu-  477. 

sive  right  to  use  the  word  "  German  "  8  The  assumption  that  the  words  "  In- 

in  America  as  against  exporters  of  Ger-  dia-Rubber  Comb  Co."  were  decided  to  be 

many,  who  made  German  sirups  within  a  trade-mark  was  erroneous ;  the  words 

German  jurisdiction.     It  is  quite  ob-  are  obviously  descriptive. 

267 


THE  SINGER  MANUFACTURING  CO.  V.  WILSON. 

476.  In  re  India-Rubber  Comb  Co. 

November  24,  1875.      U.  S.  Patent  Office:  Spear,  Act.  Comm.  —  8  U.  S. 

Pat.  Gaz.  905. 

THE  words  "  The  India-Rubier  Comb  Company  of  New 
York  "  admitted  to  registration  as  a  trade-mark,  on  a  rehear- 
ing, after  a  previous  refusal,  on  the  ground  that  the  words 
were  established  to  be  the  applicants'  trade-mark  by  the  de- 
cision of  the  Superior  Court  of  New  York  in  India-Rubier 
Comb  Co.  v.  Meyer ;  and  that  although  registration  of  the 
mere  name  of  a  person,  firm,  or  corporation  was  forbidden  by 
the  U.  S.  Statute  of  1870,  yet  such  a  name  might  be  regis- 
tered as  being  "  a  lawful  trade-mark  rightfully  in  use  on  the 

8th  July,  1870."  1 

» 

477.  The  Singer  Manufacturing  Co.  v.  Wilson. 

December  14, 1875  ;  March  25,  1867  ;  December  13, 1877.  Jessel,  M.  R.  — 
2  Ch.  D.  434;  45  L.  J.  Ch.  491 ;  34  L.  T.  N.  S.  858  ;  24  W.  R.  1023. 
Ct.  ofApp. :  James,  Hellish  Sf  Baggallay,  L.  JJ.  —  2  Ch.  D.  448 ;  45  L. 
J.  Ch.  490;  34  L.  T.  N.  S.  863 ;  24  W.  R.  1026.  H.  of  L.  —  3  App- 
Cas.  376 ;  47  L.  J.  Ch.  481 ;  38  L.  T.  N.  S.  303 ;  26  W.  R.  664. 

THE  plaintiffs  being  manufacturers  of  sewing-machines 
under  various  patents  since  expired,  who  placed  on  their  ma- 
chines the  words  "  The  Singer  Manufacturing  Company"  and 
also  a  trade-mark  consisting  of  an  ellipse  containing  a  shuttle 
and  needles,  crossed  with  a  line  of  cotton  in  the  form  of  an  S, 
and  the  words  and  letters  "  Trade-Mark"  "  The  Singer  M. 
F.  Gr.  Co.,  N.  I7.,"  and  who  alleged  that  their  machines  had 
become  generally  known  as  the  "  Singer,"  or  "  Singer's  "  ma- 
chines ;  the  defendant,  who  manufactured  sewing-machines  on 
the  principles  of  a  variety  of  expired  patents,  began  to  use, 
among  others,  the  patents  formerly  owned  by  the  plaintiffs  and 
their  predecessors  in  business,  and,  by  his  agents  and  his  price- 
lists,  etc.,  described  such  machines  as  "  Our  Singer  Machines" 
and  placed  on  them  his  trade-mark,  consisting  of  a  brass  plate 
representing  St.  George  and  the  Dragon,  within  the  words 

1  See  preceding  case. 

268 


THE  SINGER  MANUFACTURING  CO.  V.  WILSON. 


"  Newton,  Wilson  $  Co,,  Manufacturers,  14h  High  Holborn," 
arranged  in  a  circle,  and  he  alleged  that  the  name  "  Singer," 
or  "  Singer's,"  was  indicative  of  an  article  made  on  the  prin- 
ciple of  construction  which  he  asserted  to  run  through  all  the 
plaintiffs'  patents,  though  they  varied  in  minor  particulars,  and 
not  of  an  article  made  by  the  plaintiffs. 

Suit  by  the  plaintiffs  for  an  injunction  to  restrain  the  de- 
fendant from  using  the  name  "  Singer  "  or  "Singer's  "  in  con- 
nection with  his  machines. 

Held,  by  the  M.  R.  and  Ct.  of  App.,  upon  the  plaintiffs' 
evidence  alone  :  (1.)  that  where  a  name  or  device  is  affixed 
to  an  article,  or  to  a  wrapper  or  vessel  in  which  it  is  contained, 
thus  becoming  a  trade-mark  proper,  it  is  not  necessary,  to  con- 
stitute an  infringement,  for  actual  fraud  to  be  proved  ;  (2.) 
that  where  a  trade  name  is  used  in  respect  of  an  article,  but 
is  not  placed  upon  it,  actual  fraud  must  be  proved  for  there  to 
be  infringement  ;  (3.)  that  the  present  case  falling  into  the 
second  class,  and  the  plaintiffs  producing  no  evidence  of  actual 
fraud,  the  injunction  must  be  refused;  (4.)  and  that,  this 
being  so,  it  was  unnecessary  to  inquire  whether  the  name  was 
indicative  of  the  plaintiffs'  make,  or  of  a  principle  of  construc- 
tion. 

Held,  by  the  H.  of  L.  :  (1.)  that,  whether  the  name  is  or 
is  not  affixed  to  the  article,  it  is  not  necessary,  to  constitute 
infringement,  for  actual  fraud  to  be  proved,  if  it  is  established 
that  the  defendant  has  acted  in  a  way  calculated  to  deceive  ; 
(2.)  that,  in  the  case  in  question,  the  plaintiffs  had  shown  a 
primd  facie  case,  but  that,  the  plaintiffs'  evidence  only  being 
before  their  lordships,  they  were  not  in  a  position  to  decide 
finally  whether  the  name  "  Singer  "  or  "  Singer's  "  was  really 
indicative  of  the  plaintiffs'  manufacture,  or  of  a  principle  of 
construction,  or  whether  the  defendant  had  acted  in  a  way 
calculated  to  deceive  ;  (3.)  and,  therefore,  that  the  case  must 
be  remitted  to  the  court  below  for  decision  upon  the  whole 
of  the  evidence. 

Per  Lord  Cairns,  C.  (3  App.  Gas.  389).  "  It  may  well  be  that,  if 
an  imitated  trade-mark  is  attached  to  the  article  manufactured,  there 

269 


THE  SINGER  MANUFACTURING  CO.  V.  WILSON. 

will,  from  that  circumstance,  be  the  certainty  that  it  will  pass  into 
every  hand  into  which  the  article  passes,  and  be  thus  a  continuing  and 
ever-present  representation  with  regard  to  it ;  but  a  representation 
made  by  advertisements  that  the  articles  sold  at  a  particular  shop  are 
articles  manufactured  by  A.  B.  (if  that  is  the  legitimate  effect  of  the 
advertisements,  which  is  a  separate  question),  must,  in  my  opinion,  be 
as  injurious  in  principle,  and  may  possibly  be  quite  as  injurious  in 
operation,  as  the  same  representation  made  upon  the  articles  them- 
selves." 

P.  391.  "I  wish  to  state  in  the  most  distinct  manner  that,  in  my 
opinion,  fraud  is  not  necessary  to  be  averred  or  proved  in  order  to 
obtain  protection  for  a  trade-mark."  "  A  man  may  take  the  trade- 
mark of  another  ignorantly,  not  knowing  it  was  the  trade-mark  of  the 
other ;  or  he  may  take  it  in  the  belief,  mistaken  but  sincerely  enter- 
tained, that  in  the  manner  in  which  he  is  taking  it  he  is  within  the 
law,  and  doing  nothing  which  the  law  forbids  ;  or  he  may  take  it, 
knowing  it  is  the  trade-mark  of  his  neighbor,  and  intending  and  de- 
siring to  injure  his  neighbor  by  so  doing.  But  in  all  these  cases  it 
is  the  same  act  that  is  done,  and  in  all  these  cases  the  injury  to  the 
plaintiff  is  just  the  same.  The  action  of  the  court  must  depend  upon 
the  right  of  the  plaintiff,  and  the  injury  done  to  that  right." 

Per  Lord  O'Hagan  (p.  396).  "  If  a  man  has  acquired  legitimately 
a  right  to  the  property  in  an  exclusive  use  of  a  name,  it  is  of  small 
account  to  him,  should  it  be  invaded,  whether  the  invasion  comes 
from  a  purpose  to  deceive,  or  from  ignorance,  or  inadvertence,  or  an 
honest  misconception  of  the  relative  rights  of  the  parties,  and  the  law 
ought  not  to  permit,  and  will  not  permit,  the  continuance  of  the  in- 
vasion, whatever  may  have  been  its  origin."  1 

1  There  can   be  no   doubt   that  the  scriptive  names,   be   treated  as  publici 

name  which  has  been  used  during  the  juris.     The  cases  are  not  at  variance 

life  of  a  patent  to  distinguish  a  patented  with  each  other  in  respect  of  principles; 

article  is  to  be  regarded  as  a  trade-mark,  but   different  courts  have  reached  dif- 

if  the  facts  show  that  it  indicates  origin;  ferent  conclusions  of  fact, 

if  they  show  that  the  name  is,  in  a  just  See    Singer    Manufacturing    Co.    v. 

sense,  descriptive,  it  will,  like  other  de-  Brill,  €?fi  ;  Same  v.  Larsen,  662; 

270 


PHELAN  V.  COLLENDER. 

478.  Tallcot  v.  Moore. 

December,  1875.     N.  Y.  Sup.  Ct.  —  lB  N.  Y.  Sup.  Ct.  (6  Hun)  106. 

THE  plaintiff  sold  certain  medicines  under  the  name  of 
"  The  Magic  Cure"  and  described  their  virtues  in  a  small 
pamphlet  with  a  red  cover,  ornamented  with  a  group  of  fig- 
ures, and  entitled  "  The  Little  Red  Book,  New  Series,  1875  ;  " 
the  defendant  sold  other  medicines  under  the  name  of  "Moore'* 
Pillules"  and  published  a  book  in  a  red  paper  cover,  entitled 
"  The  Red  and  White  Book"  the  words  "  Red  Book  "  being  in 
red  letters,  but  with  no  figures  on  the  cover,  the  contents 
being  much  the  same  as  those  of  the  plaintiff's  book. 

Injunction,  which  had  been  granted  to  restrain  the  defend- 
ant from  infringing  the  plaintiff's  rights,  dissolved,  on  the 
ground  that  deception  was  not  probable,  but  an  intention  to 
deceive  being  held  to  be  perceptible,  no  costs  given  of  the 
appeal,  nor  of  a  motion  in  the  court  below  to  vacate  the 

injunction.1 

* 

479.  Phelan  v.  Collender. 

December,  1875.     N.  Y.  Sup.  Ct.  —  lS  N.  Y.  Sup.  Ct.  (6  Hun)  244. 

THE  defendant  being  the  surviving  partner  of  the  firm  of 
"  Phelan  and  Collender,"  billiard-table  makers,  and  having 
purchased  from  the  executors  of  his  deceased  partner  the  in- 
terest of  the  latter  in  the  partnership  property,  patents,  trade- 
marks, etc.,  described  himself  as  "  H.  W.  Collender,  Successor 
to  Phelan  and  Collender"  and  his  billiard-tables  as  "  Phelan 
and  Collender's  Standard  American  Tables" 

Suit  by  the  son  of  the  deceased  partner,  himself  a  billiard- 
table  maker,  for  an  injunction  to  restrain  the  defendant  from 
so  doing. 

Injunction  refused,  on  the  ground  that  the  plaintiff  had  no 
more  right  than  any  other  person  of  the  same  name  had  to 
interfere  with  the  defendant's  use  of  his  father's  name,  and, 
chiefly,  that  the  defendant  had  not  acted  with  any  intent  to 
deceive,  or  otherwise  than  he  was  entitled  to  do. 

1  See  Hogg  v.  Kirby,  10. 

271 


REPUBLIC  OF  PERU  V.  REEVES. 


48O.  In  re  Kane  &  Co. 

December  27,  1875.     U.  S.  Patent  Office:  Duett,  Comm.  —  d  U.  S.  Pat. 

Gaz.  105. 

APPLICATION  for  the  registration  of  "galvanized  iron  hoops 
placed  on  a  barrel  of  a  dark  color,"  as  a  trade-mark  in  respect 
of  spirituous  liquors,  refused,  on  the  ground  that  such  hoops 
had  long  been  used  on  barrels,  and  that,  even  if  the  applicants 
were  the  first  to  use  them  on  barrels  of  spirits,  they  would 
convey  no  distinctive  idea.1 


481.  Faber  v.  Hovey. 

December  30,  1875.     N.  Y.  Sup.  Ct.  —  Codd.  Dig.  79,  249. 

ACTION  by  the  plaintiff  for  an  injunction  to  restrain  an 
infringement  of  his  trade-mark  on  lead-pencils. 

Held,  (1.)  that  the  word  '•'•Star"  was  a  good  trade-mark; 
(2.)  that  there  was  no  error  in  an  assessment  of  damages  by 
the  referee,  in  which  he  found  that  the  damages  were  equal 
to  the  profits  which  the  plaintiff  would  have  made  from  the 
manufacture  and  sale  of  the  same  number  of  articles  as  the 
defendant  had  sold  under  the  spurious  mark.2 


482.  Republic  of  Peru  v.  Beeves. 
January  3,  1876.    N.  Y.  Super.  Ct.  —  40  N.  Y.  Super.  Ct.  (8  /.  §•  S.)  316. 

AN  injunction  having  been  granted  and  continued  until 
further  order,  in  1873,  without  opposition  by  the  defendant, 
to  restrain  an  infringement  of  the  plaintiffs'  trade-marks  on 
guano,  and  the  defendant  having  died  in  1874  : 

Motion  by  his  administratrix,  in  1875,  to  have  the  action 
continued  against  herself  as  such  administratrix,  refused,  on 
the  ground  that  it  was  not  shown  that  the  defendant  had  ac- 
quired any  rights  in  the  litigation,  or  that  his  estate  would  be 
prejudiced  by  the  action  not  being  continued. 

1  See    Williams    v.    Johnson,    150;      of  Appeals  by  a  divided  court.      See 
Moorman  v.  Hoge,  373.  Graham  v.  Plate,  347. 

2  This  case  was  affirmed  in  the  Court 

272 


FRESE  V.  BACHOF. 

483.  Hennessy  v.  Wheeler. 

January.  1876;  April  10,  1877.  N.  Y.  C.  P.:  Robinson,  J.  —  51  How. 
Pr.  457.  N.  Y.  Ct.  of  App.  —  69  N.  Y.  (24  Sickels)  271 ;  15  Alb.  L.  J. 
454. 

ACTION  by  the  plaintiffs,  brandy  manufacturers  and  im- 
porters, for  an  injunction  to  restrain  an  infringement  of  their 
trade-mark  placed  upon  the  bottles  containing  their  brandy, 
being  nominally  "  quart "  and  "  pint "  bottles. 

Held,  by  the  Common  Pleas,  that  the  action  must  be  dis- 
missed, on  the  ground  that  the  plaintiffs  were  themselves 
guilty  of  misrepresentation  in  selling,  as  quart  and  pint  bot- 
tles, bottles  which  contained  less,  the  deficiency  amounting  to 
about  7-30ths. 

Held,  by  the  Court  of  Appeals,  that  the  bottles  were  not 
sold  by  the  plaintiffs  or  others  as  measures  of  capacity,  but 
were  of  the  ordinary  sizes  used  in  the  trade,  the  capacity  of 
which  was  generally  understood  ;  that  there  was  no  evidence 
that  any  one  had  been  or  was  likely  to  be  deceived ;  that  the 
plaintiffs  were,  therefore,  not  disentitled,  and  that  a  new  trial 
must  be  granted. 

484.  Frese  v.  Bachof.    (1.) 

January,  1876.    U.  S.  C.  C.  S.  Dt.  ofN.  Y. :  Johnson,  J.  —  13  Bl.  C.  C.  234. 

THE  plaintiffs  selling  tea  in  packets  labelled  "  J.  C.  Frese 
$  Co.,  Hopfensack,  6,  Hamburg,"  the  defendant  sold  tea  in 
packets  similarly  labelled. 

Suit  for  an  injunction  to  restrain  the  defendant  from  infring- 
ing the  plaintiffs'  rights.  On  motion  for  preliminary  injunc- 
tion : 

Held,  (1.)  that  an  injunction  must  be  granted  to  restrain 
the  defendant  from  using  the  name  "  J.  C.  Frese  $-  Co.,"  and 
from  using  on  his  labels  the  words  "Ji  C.  Frese  $  Co.,  Hop- 
fensack,  6,  Hamburg,"  notwithstanding  that  he  claimed  to 
have  discontinued  the  use  of  the  name  and  label ;  (2.)  but 
that  a  preliminary  injunction  to  restrain  the  defendant  from 
is  273 


IN  RE  AMERICAN  LUBRICATING  OIL  CO. 

making  up  his  tea  in  packages  of  the  same  size,  shape,  and 
color  as  the  plaintiffs',  must  be  refused,  the  defendant's  labels 
containing  his  own  name  in  distinct  characters,  and  the  plain- 
tiffs showing  no  exclusive  right  to  the  size,  etc.,  of  their  pack- 
ages.1 

485.  Peltz  v.  Eichele. 
January,  1876.     Missouri  Sup.  Ct.  — 62  Mo.  (21  Post)  171. 

THE  defendant,  having  covenanted  with  the  plaintiffs  or 
their  assignors,  on  the  sale  to  them  of  his  match  business  in 
St.  Louis,  with  the  good-will,  trade-marks,  etc.,  and  the  trade 
names  of  "A.  Eichele"  and  " A.  Eichele  $  Co."  that  he 
would  not  resume  the  manufacture  of  matches  at  St.  Louis,  or 
in  any  other  place,  for  five  years,  or  assist  others  in  so  doing, 
set  up  as  a  manufacturer  of  matches  in  St.  Louis,  within  the 
five  years,  under  the  name  of  "  P.  Eichele  <$•  Co."  and  di- 
verted customers  of  the  plaintiffs. 

Held,  (1.)  that  the  covenant  was  good,  at  all  events  as  far 
as  regarded  St.  Louis,  and  that  a  breach  had  been  committed ; 
(2.)  that  the  measure  of  damages  was  the  loss  occasioned  to 
the  plaintiffs  by  the  breach  of  covenant,  and  not  the  defend- 
ant's profits,  though  the  defendant's  profits  were  one  element 
to  be  considered  in  ascertaining  what  the  plaintiffs  had  lost. 


486.  In  re  The  American  Lubricating  Oil  Co. 

February  2,  1876.     U.  S.  Patent  Office  :  Duett,  Comm.  —  d  U.  S.  Pat.  Gaz. 

687. 

APPLICATION  for  the  registration  of  the  word  "Star"  as  a 
trade-mark  on  oil,  refused,  on  the  ground  that  there  was 
already  registered  in  another  name,  for  use  upon  the  same 
class  of  goods,  a  device  representing  a  star,  containing  the 
letter  "  6r,"  and  that  the  use  of  the  word  "  Star  "  by  the  ap- 
plicants would  be  calculated  to  deceive  the  public,  inasmuch 

1  The  decision  in  this  case  upon  final     of  package.     See  Williams  v.  Johnson, 
hearing,  603,  fully  recognized  complain-     150. 
ants'  exclusive  right  to  use  their  style 

274 


WYLAM  V.  CLARKE. 


as  their  oil,  as  well  as  that  of  the  parties  already  registered, 
would  acquire  the  name  of  "  Star  Oil" 


487.  Western  v.  Ketcham.    (2.) 
February,  1876.     N.  Y.  Super.  Ct. :  Sedgwick,  J.—  51  How.  Pr.  455. 

MOTION  by  the  plaintiffs  in  Weston  v.  Ketcham  (1.),  f°r  an 
injunction  to  restrain  the  defendants  in  that  case  from  selling 
"Pepper's  Signal  Oil"  refused,  on  the  ground  (1.)  that  the 
plaintiffs  showed  no  title  to  the  trade-mark  or  name  superior 
to  that  of  the  defendants  ;  (2.)  that  the  agreement  between 
the  plaintiff  Weston  and  the  widow  of  the  inventor  could  add 
nothing  to  the  plaintiffs'  rights,  since  the  widow  could  acquire 
no  right  to  the  trade-mark  in  gross,  and  had  succeeded  to  no 
business  to  which  it  was  attached  ; 1  (3.)  that  the  allegation 
that  the  defendants  sold  as  "Pepper's  Signal  Oil  "  that  which 
was  not  so  gave  the  plaintiffs  no  cause  of  action. 

"  There  is  no  such  thing  as  a  trade-mark  '  in  gross,'  to  use  that 
term  by  analogy.  It  must  be  '  appendant'  of  some  particular  business 
in  which  it  is  actually  used  upon,  or  in  regard  to,  specific  articles." 

488.  Wylam  v.  Clarke. 
February  11,  1876.     Bacon,  V.  C.  —  W.  N.  1876,  p.  68. 

THE  plaintiffs  being  manufacturers  of  Spratt's  dog  biscuits, 
which  they  stamped  with  "  X "  and  the  words  "  Spratt's  Pat- 
ent" the  defendant  began  to  manufacture  similar  biscuits,  but 
marked  them  with  an  anchor  and  the  words  "Buffalo  Meat" 

Injunction  to  restrain  the  defendant  from  infringing  the 
plaintiffs'  rights  refused,  on  the  ground  that  the  marks  were 
not  sufficiently  alike  to  deceive,  but  the  defendant  not  having 
proved  his  bona  fides  in  the  matter,  no  costs  given,  except  as 
to  a  part  of  the  case  which  the  plaintiffs  had  abandoned. 

1  See  Witthaus  v.  Braun,  492. 

275 


IN  BE  COGGIN,  KIDDER  &  CO. 

489.  Coe  v.  Bradley. 

February  17,  1876.     U.  S.  C.  C.  Dt.  of  Mass.    Shspley,  /.  —  9  U.  S.  Pat. 

Gaz.  541. 

THE  plaintiff,  being  the  inventor  of  "  COB'S  Superphosphate 
of  Lime"  entered  into  a  contract  with  the  defendant,  under 
which  the  latter  was  to  have  the  exclusive  use  of  the  plain- 
tiff's trade-mark,  consisting  of  the  name  of  the  article,  for  a 
limited  period,  the  contract  providing  for  the  payment  to  the 
plaintiff  of  a  certain  share  of  the  profits  of  the  business,  and 
also  that  a  breach  of  the  contract  by  the  one  party  should  re- 
lease the  other  from  his  obligations. 

Suit  by  the  plaintiff  for  the  recovery  from  the  defendant 
of  the  share  of  profits  agreed  to  be  paid  to  the  plaintiff. 

Held,  that,  notwithstanding  that  the  plaintiff  had  broken 
the  contract  by  the  sale  of  an  article  under  the  name  of 
"  Coe's  /Superphosphate  of  Lime,"  and  "  Andrew  Coe's  Super- 
phosphate of  Lime,"  he  was  entitled  to  recover  the  share  of 
profits  agreed  to  be  paid  to  him,  but  that  there  must  be  de- 
ducted from  such  share  a  sum  to  be  assessed  by  way  of  dam- 
ages for  the  infringement  by  the  plaintiff  of  the  trade-mark 
which  the  defendant  had  acquired  the  exclusive  temporary 

right  to  use. 

» 

490.  In  re  Coggin,  Kidder  &  Co. 

February  21,  1876.     U.  S.  Pat.  Office :  Spear,  Act.  Comm.  —  U  U.  S.  Pat. 

Gaz.  1109. 

APPLICATION  for  the  registration  of  a  device,  consisting 
principally  of  the  word  "  Haxall "  and  a  Maltese  cross,  as  a 
trade-mark  on  flour,  refused,  on  the  ground  that  the  word 
"  Haxall "  had  for  many  years  been  the  trade-mark  of  an- 
other firm,  and  that  the  use  of  the  proposed  trade-mark  would 
be  calculated  to  deceive. 

276 


WITTHAUS  V.  BRAUN. 

491.  In  re  Howe  &  Post. 

February  25,  1876.     U.   S.  Patent  Office:  Spear, Act.  Comm.  —  9  U.  S. 

Pat.  Gaz.  496. 

APPLICATION  for  the  registration  of  the  words  "  New  York 
Cutlery  Co."  as  a  trade-mark  refused,  on  the  ground  that  the 
name,  having  only  been  used  by  the  applicants  for  a  fort- 
night, had  neither  acquired  a  reputation  in  the  market,  nor 
been  in  use  as  an  existing  trade-mark  on  the  8th  July,  1870, 
and  that  its  registration  was,  therefore,  prohibited  by  the  U. 
S.  Statute  of  1870,  as  being  a  "  mere  name  of  a  person,  firm, 

or  corporation." 

» 

492.  Witthaus  v.  Braun. 
March,  1876.     Maryland  Ct.  of  App.  —  44  Md.  303  ;    22  Amer.  Rep.  44. 

THE  plaintiff  being  a  tobacco  manufacturer,  who  had  been 
accustomed  to  manufacture  a  certain  kind  of  tobacco  for  an- 
other person,  according  to  his  instructions,  and  had  recently 
purchased  and  had  assigned  to  him  the  trade-mark  used  by 
that  other  person  on  the  tobacco  so  manufactured,  the  defend- 
ants sold  other  tobacco  under  a  similar  trade-mark. 

Suit  by  the  plaintiff  for  an  injunction  to  restrain  an  alleged 
infringement  of  this  trade-mark  by  the  defendants  : 

Held,  (1.)  that  although  a  trade-mark  could  not  be  trans- 
ferred in  gross,  since  that  would  involve  a  fraud  upon  the 
public,  a  transfer  to  one  who  was  already  the  manufacturer 
of  the  article  was  not  open  to  objection  on  this  ground ; 
(2.)  but  that  the  title  of  the  original  user  of  the  mark  to 
its  exclusive  use  was  too  doubtful  for  an  injunction  to  be 
granted. 

"  Where  a  trade-mark  is  used  to  designate  the  place  and  the  person 
by  whom  the  goods  are  made,  the  right  to  such  trade-mark  passes  to 
the  purchaser  upon  the  sale  and  transfer  of  the  business  and  manu- 
factory at  which  the  goods  are  made. 

"  The  mere  sale  of  a  trade-mark,  apart  from  the  article  to  which  it 
is  affixed,  confers  no  right  of  ownership,  because  no  one  can  claim 

277 


HIRSCH  V.  JONAS. 

the  right  to  sell  his  goods  as  goods  manufactured  by  another.  To 
permit  this  to  be  done  would  be  a  fraud  upon  the  public.  But 
where  the  trade-mark  is  assigned  to  the  person  who  manufactured 
the  article  to  which  the  trade-mark  was  affixed,  there  is  no  false  rep- 
resentation to  the  public,  because  the  tobacco  is  still  manufactured 
at  the  same  place  and  by  the  same  person.  It  is,  in  fact,  the  same 
article." 


493.  In  re  Dick  &  Co. 

March  8,  1876.     U.  S.  Patent  Office:  Duell,  Comm.  —  9   U.  S.  Pat.  Gaz. 

538. 

APPLICATION  for  the  registration  of  the  words  and  letters 
"  D.  D.  $•  Co.  —  Tasteless"  as  a  trade-mark  for  drugs  and 
medicines,  refused,  on  the  ground  that  the  adjective  was 
either  descriptive  of  a  quality  of  the  article,  or  was  decep- 
tive ;  and  that  the  fact  that  the  other  elements  associated 
with  the  word  were  unobjectionable  did  not  constitute  the 
combination  a  valid  mark. 


494.   Hirsch  v.  Jonas. 

March  12,  1876.     Jessel,  M.  R.  —  3  Ch.  D.  584;  45  L.  J.  CJi.  364;  L.  T. 

N.  S.  228. 

THE  plaintiff  was  a  London  cigar  merchant,  who  imported 
cigars  made  by  Genir,  of  Havana,  and  which  were,  at  the 
plaintiff's  suggestion,  supplied  to  him  by  the  latter  in  boxes 
labelled  with  a  design  of  Britannia  and  the  words  "  Gloria 
de  Inglaterra,"  to  which  Genir  added  the  words  "  Of  Joseph 
Grenir,  Manufacturer  of  Cigars,  of  Havana."  Boxes  of  cigars 
so  labelled  were  supplied  by  Genir,  until  shortly  before  the 
commencement  of  the  action,  to  the  plaintiff  alone,  but  he 
had  no  contract  with  Genir  for  the  continued  exclusive  or  any 
supply  of  such  cigars,  and  the  defendants,  being  new  London 
agents  of  Genir,  began  to  sell  boxes  of  cigars,  consigned  to 
them  by  Genir,  similarly  labelled. 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendants  from  so  doing  refused,  on  the  ground  that,  although 

278 


IN  RE  ROHLA.ND. 

it  was  possible  for  a  trade-mark  to  indicate  selection  by  a 
person  of  reputation  in  that  capacity,  all  that  was  indicated 
by  the  trade-marks  in  question  was  that  the  cigars  were  of 
Genir's  manufacture,  and  that  there  was  no  contract  between 
Genir  and  the  plaintiff  securing  to  the  latter  the  exclusive 
sale  of  the  cigars. 

495.  Mickle  v.  Emery. 
March  18,  1876.    Jessel,  M.  R.  —  Seton,  4th  ed.  234. 

ON  motion  by  the  plaintiff  injunction  granted,  upon  an 
undertaking  as  to  damages,  to  restrain  an  infringement  of 
the  plaintiff's  trade-marks  registered  under  the  Trade-Mark 
Act  of  1875. 

496.  Lautz  Bros.  &  Co.  v.   Schultz  &  Co. 

April  3,  1876.      U.  S.  Patent  Office:  Duett,  Comm.  —  9  U.  S.  Pat.  Gaz. 

791. 

INTERFERENCE  declared  between  the  applications  of  the 
parties  for  registration,  for  the  purpose  of  deciding  to  which 
the  trade-mark,  the  subject  of  the  applications,  belonged. 

Motion  to  dissolve  the  interference,  on  the  ground  that 
there  was  no  statutory  authority  given  to  the  Patent  Office 
to  declare  an  interference,  refused,  on  the  ground  that  the 
Commissioner  of  Patents  was  authorized  to  establish  regula- 
tions for  the  conduct  of  proceedings  in  the  Patent  Office,  and 
that  this  was  sufficient  to  empower  him  to  direct  an  interfer- 
ence in  a  trade-mark  case. 


497.  In  re  Rohland. 

April   6,    1876.     U.  S.  Patent  Office:   Doolittle,  Asst.  Comm.  —  10  U.  S. 

Pat.  Gaz.  980. 

ON  an  application  to  register  the  words  "  Dr.  LobenthaVs 
Essentia  Antiphthisica"  as  a  trade-mark  on  a  medical  com- 
position : 

279 


THE  AMOSKEAG  MANUFACTURING  CO.  V.  GARNER. 

Held,  that  the  words  were  not  merely  descriptive  of  the 
article,  and  registration  granted. 


498.  Robineau  v.  Charbonnel. 

May  4,  1876.     Malins,  V.  C.—  W.  N.  1876,  p.  160;  L.  J.  Notes  of  Cos. 

1876,  p.  104. 

THE  plaintiff,  carrying  on  business  as  a  confectioner  in 
Paris,  under  the  style  of  "  Maison  Boissier"  the  defendants, 
who  had  been  principal  employes  in  the  plaintiff's  establish- 
ment, set  up  business  in  Bond  Street,  and  placed  in  their  win- 
dow the  words  "  Ex  l^res  de  la  Maison  Boissier  de  Paris"  the 
words  "  Ex  lires  de  la  "  being  in  very  small  letters. 

Injunction  to  restrain  the  defendants  from  infringing  the 
plaintiff's  rights  refused,  on  the  ground  that,  the  plaintiff 
having  no  shop  in  England,  the  public  would  not  be  deceived, 
but  no  costs  given,  the  conduct  of  the  defendants  not  having 
been  blameless. 


499.  Poster  v.  Megevand. 
May  19,  1876.     Jessel,  M.  R.  —  Pemb.  2d  ed.  393. 

INJUNCTION  granted  to  restrain  an  infringement  of  the 
plaintiff's  trade-mark,  with  an  account  and  inquiry  as  to  dam- 
ages. 


500.  The  Amoskeag  Manufacturing  Co.  v.  Garner.    (2.) 

1876.     N.  Y.  Sup.  Ct.  —  4  Am.  L.  T.  N.  S.  176. 

THE  plaintiff  company  manufacturing  cotton  goods,  but  not 
prints,  and  placing  on  the  cotton  goods  labels  containing  the 
word  "Amoskeag"  or  the  initials  "A.  M.  Co."  or  "A.  M.  C." 
the  defendant  sold  prints  labelled  with  the  word  "Amoskeag" 

Suit  for  an  injunction  to  restrain  the  defendant  from  in- 
fringing the  plaintiffs'  rights. 

Held,  (1.)  that  the  defendant  had  no  right  to  use  the  plain- 
tiffs' corporate  name  ;  (2.)  that  his  intention  in  so  doing  was 
immaterial ;  (3.)  that,  to  constitute  infringement,  it  was  suffi- 

280 


IN  RE  WEAVER. 

cient  for  there  to  be  a  probability,  or  even  a  possibility,  of 
the  public  being  deceived  ;  (4.)  that  the  injunction  must  be 
granted  ;  (5.)  but  that,  on  account  of  the  plaintiffs'  delay  in 
taking  proceedings,  no  damages,  account  of  profits,  or  costs, 
could  be  given. 

Per  Barrett,  J.  "  The  only  difference  between  the  parties  on  this 
head  is  as  to  the  legal  treatment  of  the  word  '  Amoskeag.'  The 
learned  counsel  for  the  defendant  says:  'It  is  no  part  of  our  claim 
that  Mr.  Jones  can  use  Mr.  Baker's  name  on  Mr.  Jones's  goods.' 
And  he  adds  :  '  If  a  baker  puts  forth  a  "  Boston  "  cracker,  and  uses 
the  name  until  it  becomes  a  trade-mark,  it  does  not  prevent  another 
baker  from  putting  out  a  "  Boston  Roll,"  or  a  "  Boston  Pie,"  or  a 
"  Boston  Plum-Pudding." ' 

"  But  now  suppose  that  the  plaintiff  had  received  from  the  Legis- 
lature of  New  Hampshire  the  name  of  '  The  Amoskeag  Baking  Com- 
pany,' and  for  forty  years  had  been  engaged  in  the  humbler,  though 
hardly  less  useful,  avocation  of  'manufacturing'  almost  every  variety 
of  bread,  roll,  muffin,  cracker,  biscuit,  cake,  and  pie,  on  which  articles 
of  food  it  had  invariably  stamped  its  corporate  name,  or  some  abbre- 
viation thereof,  such  as  'Amoskeag  B.  Co.,'  or  'Am.  Baking  Co.,'  or 
'Am.  B.  Co.,'  or  ' Amoskeag' '\  Suppose,  however,  that  the  plaintiff 
had  omitted,  or  had  not  yet  decided,  to  make  and  vend  the  single  va- 
riety known  as  '  Crumpets,'  and  thereupon  a  rival  baker  attempted 
to  sell  his  crumpets  as  '  Amoskeag  Crumpets,'  would  not  any  cus- 
tomer, upon  seeing  the  name  thus  applied,  naturally  say  that  the 
Amoskeag  Baking  Company  had  added  crumpets  to  its  other  varieties 
of  bread  ?  And  would  not  the  rival  bakery  be  restrained  —  upon  the 
plain  principle  of  an  unauthorized  use  of  the  company's  name  ?  The 
parallel  is  not  precise,  as  the  printing  of  calicoes  may  require  some 
additional  machinery.  But  the  difference  is.  only  in  degree." 

501.  In  re  Weaver. 
June  6,  1876.     U.  S.  Patent  Office:  Duett,  Comm.  —  lO  U.  S.  Pat.  Gaz.  1. 

AN  alternative  trade-mark,  consisting  either  of  the  figure 
of  a  lion,  or  of  the  word  "Lion"  or  of  both,  admitted  to 
registration,  on  the  ground  that  the  above  were  merely  three 
forms  of  the  same  trade-mark. 

281 


GROCER  PUBLISHING  ASS.  V.  GROCER  PUBLISHING  CO. 

5O2.  Filkins  v.  Blackman. 
June,  1876.     U.  S.  C.  C.  Dt.  of  Conn. :  Shipman,  J.  —  13  BL  C.  C.  440. 

JONAS  BLACKMAN,  the  inventor  of  a  medicine  which  he 
called  "  Dr.  J.  Blackmails  Genuine  Healing  Balsam"  having 
assigned  to  M.  L.  Filkins,  for  ten  years  from  January  1,  1866, 
the  exclusive  right  to  manufacture  the  medicine  under  that 
name,  on  certain  terms,  with  a  proviso  that  if  M.  L.  Filkins 
complied  with  those  terms  for  the  ten  years,  the  right  should 
be  continued  for  a  further  period  of  fifty  years,  the  defendant, 
being  the  son  of  Jonas  Blackman,  began,  after  the  expiration 
of  the  ten  years,  to  make  and  sell  a  medicine  under  the  same 
name. 

On  motion  by  Filkins  Brothers  injunction  granted  to  re- 
strain the  defendant  from  so  doing  ;  and  Held,  (1.)  that  the 
name  was  a  good  trade-mark ;  (2.)  that  the  assignment  was  a 
good  transfer  of  the  right  to  use  it  on  the  same  goods,  though 
it  would  give  no  right  to  it  as  used  on  different  goods ;  (3.) 
that  after  the  assignment  the  original  inventor  could  give  no 
right  in  the  name  to  the  defendant ;  (4.)  that  the  fact  that 
M.  L.  Filkins  had  his  brother  as  a  co-plaintiff  was  no  defence, 
since  the  trade-marks  of  a  person  entering  into  a  partnership 
became  partnership  property. 

"  The  right  to  the  use  of  a  trade-mark  cannot  be  so  enjoyed  by  an 
assignee,  that  he  shall  have  the  right  to  affix  the  mark  to  goods  differ- 
ing in  character  or  species  from  the  article  to  which  it  was  originally 
attached." 


503.  American  Grocer  Publishing  Association  v.  Grocer 

Publishing  Co. 
June,  1876.     N.  Y.  Sup.  Ct.  —  5l  How.  Pr.  402. 

ACTION  by  the  plaintiffs  for  an  injunction  to  restrain  the 
publication  of  a  newspaper  in  imitation  of  their  paper,  "  The 
American  Grrocer." 

Motion  by  the  plaintiffs  to  continue  pendente  lite  an  injunc- 
tion which  had  been  granted  refused,  on  the  ground  that  there 

282 


EX  PARTE  STEPHENS. 


was  not  such  similarity  between  the  papers  as  to  justify  the 
court  in  deciding  in  the  plaintiffs'  favor  on  motion,  and  that 
the  balance  of  convenience  was  against  the  continuance  of  the 
interlocutory  injunction.1 


504.  In  re  Lawrence  &  Co. 

June  20,  1876.     U.  S.  Patent  Office:  Duell,  Comm.  —  10   U.  S.  Pat.  Gaz. 

163. 

APPLICATION  for  the  registration  of  the  German  words 
"  Fur  Familien  Grebrauch"  and  "  Lawrence  Feiner  Familien 
Flannel"  signifying  respectively  "  For  Family  Use"  and 
"  Lawrence  Fine  Family  Flannel"  as  trade-marks  on  flannel 
goods,  refused,  on  the  ground  that  they  were  mere  words  in 
common  use  and  not  distinctive. 

5O5.  Ex  parte  Stephens  [T.  M.  A.  1875].    (1.) 
June  21,  1876.     Jessel,  M.  R.  —  24  W.  R.  819;  1  Trade-Marks,  13. 

APPLICATION  having  been  made  for  the  registration  of  a 
trade-mark  under  the  T.  M.  A.  1875,  and  the  registrar  hav- 
ing declined  to  register  the  proposed  trade-mark  as  not  being 
within  the  act  : 

On  motion  by  the  applicant  for  directions  as  to  the  proper 
mode  of  applying  to  the  court,  so  as  to  obtain  the  registra- 
tion of  the  proposed  trade-mark  :  Held,  that  the  proper  mode 
of  applying  for  the  opinion  of  the  court  was  by  way  of  mo- 
tion to  rectify  the  register  by  the  insertion  of  the  applicant's 
name  as  the  proprietor  of  the  trade-mark,  two  clear  days' 
notice  being  given  to  the  Registrar  of  Trade-marks,  and  the 
application  being  supported  by  an  affidavit  by  the  applicant, 
stating  the  facts. 

1  See  Hogg  T.  Kirby,  10. 

283 


IN  RE  SIMPSON  &  SONS. 

506.  In  re  Bush  &  Co. 

June  21,  1876.    U.  S.  Patent  Office:  Duett,  Comm.—lO  U.  S.  Pat.  Gaz. 

164. 

APPLICATION  for  the  registration  of  the  words  "Centen- 
nial, Isidor  Bush  $  Co.,  St.  Louis,  Mo.,"  in  combination 
with  the  applicants'  already  registered  trade-mark  and  the 
obverse  and  reverse  of  the  centennial  medal,  as  a  trade-mark 
on  sparkling  wines,  refused,  on  the  ground  that  the  word 
"  Centennial  "  had  already  been  registered  in  another  name 
for  alcoholic  spirits,  which  would  to  some  extent  include 
wines,  and  that  the  obverse  and  reverse  of  the  centennial 
medal  had  been  registered  in  a  third  class,  and  that  purchas- 
ers would  not  be  likely  to  be  deceived. 

507.  In  re  The  Rubber  Clothing  Co. 

June  28,  1876.     U.  S.  Patent  Office:  Duell,  Comm.  —  lO  U.  S.  Pat.  Gaz. 

111. 

ON  an  application  for  the  registration  of  the  words  "  Rub- 
ber Clothing  Co."  as  a  trade-mark  on  clothing  : 

Held,  that  although  the  words  merely  composed  the  name 
of  a  corporation,  and,  therefore,  came  within  the.  prohibition 
to  register  in  the  U.  S.  Statute  of  1870,  yet  registration 
should  be  granted,  as  of  a  "lawful  trade-mark  rightfully  in 
use  on  the  8th  July,  1870,"  on  its  being  satisfactorily  estab- 
lished by  affidavit  evidence  that  the  name  was  in  actual  use 
as  a  trade-mark  at  that  date. 


508.  In  re  Simpson  &  Sons. 

July  13,  1876.     U.  S.  Patent  Office:  Doolittle,  Act.  Comm.  —  lO  U.  S. 

Pat.  Gaz.  333. 

APPLICATION  for  the  registration,  as  labels,  of  two  labels, 
of  which  one  consisted  of  the  word  "  Eddystone,"  with  a 
picture  of  a  light-house  and  the  words  "  Wm.  /Simpson  $• 
Sons,  Philadelphia,  No.  —  yds."  and  the  other  of  a  picture 

284 


SMITH  V.  REYNOLDS. 

of  three  female  figures  standing  near  a  tomb,  with  the  words 
"  Wm.  Simpson  £  Sons,  Philadelphia,"  refused,  on  the 
ground  that  they  were  properly  trade-marks,  and  must  be 

registered  as  such. 

• 

509.  The  Apollinaris  Company  (Limited)  v.  Edwards. 
July  13,  1876.    Bacon,  F.  C.  —  Seton,  4th  ed.  237. 

THE  plaintiffs  being  the  exclusive  importers  of  Apolli- 
naris water  into  England,  under  agreement  with  the  owners 
of  the  Apollinaris  Spring  in  Germany,  the  defendants  used 
the  word  "  Apollinaris  "  in  connection  with  waters  other  than 
the  genuine. 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendants  from  so  doing.1 


51O.  Ex  parte  Stephens  [T.  M.  A.  1875].     (2.) 

July  28,  1876.     Jessel,  M.  R.  —  3  Ch.  D.  659 ;  46  L.  J.  Ch.  46  ;  24  W.  R. 
963;  1  Trade-Marks,  13. 

MOTION  to  register  as  a  trade-mark  on  inks  the  word  or 
combination  of  letters  "Aeilyton"  such  word  not  having  been 
used  as  a  trade-mark  before  the  passing  of  the  above  act,  re- 
fused, on  the  ground  that  the  wording  of  the  10th  section  of 
the  above  act  excluded  from  registration  a  mere  combination 
of  letters,  newly  adopted  since  the  act. 


511.    Smith  v.  Reynolds.     (3.) 

July,   1876.      U.  S.  C.  C.  S.  Dt.  of  N.  Y.:  Shipman,  J.—  13  Bl.  C.  C. 

458. 

THE  plaintiff  having  registered  a  crown  under  the  U.  S. 
Act  of  1870  as  his  trade-mark  for  paints,  but  not  having  at 
that  time,  or  since,  used  the  crown  on  white  lead,  the  defend- 
ants used  a  trade-mark  containing  a  crown  as  their  trade- 
mark on  white  lead,  they,  or  their  predecessors  in  business, 

1   See  Apollinaris  Co.  v.  Moore. 

285 


LEA  V.  MILLAR. 

having  done  so  from  about  a  year  previous  to  the  registration 
of  the  plaintiff's  mark. 

Injunction  to  restrain  the  defendants  from  continuing  to 
use  the  crown  on  their  white  lead  refused,  on  the  ground  that 
the  registration  of  the  plaintiff's  mark  for  paints  generally  did 
not  give  him  a  right  to  interfere  with  the  continued  user  by 
the  defendants  of  a  mark  which  they  had  acquired  a  right  to 
use  in  connection  with  a  particular  kind  of  paint  before  the 
registration  of  the  plaintiff's  mark. 


512.    Compagnie  Laferme  v.  Hendrickx. 
July  20,  1876.     Jessel,  M.  R. 

THE  plaintiffs  being  a  Dresden  company  of  cigarette  mak- 
ers, who  sold  their  cigarettes  in  certain  special  wrappers,  etc., 
and  under  the  name  "  Laferme"  the  defendant  sold  other 
cigarettes  under  the  same  name  and  in  similar  wrappers. 

Injunction  granted  to  restrain  the  use  of  labels  and  wrap- 
pers imitated  from  the  plaintiffs',  but  refused  as  to  word 
"Laferme,"  on  the  ground  that  it  was  not  established  that 
the  plaintiffs'  predecessor  in  business  was  the  first  in  Germany 
to  use  it. 

Costs  up  to  the  motion  at  which  the  interlocutory  injunc- 
tion as  to  the  wrappers,  etc.,  was  granted,  given  to  the  plain- 
tiffs, subsequent  costs  to  be  borne  by  the  respective  parties. 


513.  Lea  v.  Millar. 
July  26,  1876.     Jessel,  M.  R.  —  Seton,  4/A  ed.  242. 

THE  plaintiffs  being  manufacturers  of  a  sauce  which  they 
termed  "  Worcestershire  Sauce"  the  defendant  sold  a  sauce 
under  the  same  name  and  with  similar  labels. 

Injunction  to  restrain  the  defendant  from  using  the  name 
and  imitating  the  plaintiffs'  labels  refused,  on  the  ground  that 
both  the  name  and  the  style  of  label  had  been  long  used  by 
sauce  manufacturers  other  than  the  plaintiffs,  and  that  the 
plaintiffs  had  publicly  abandoned  their  old  labels  by  the 

286 


IN  RE  MEIKLE. 

recent  adoption  of  a  new  label  bearing  their  signature  as  a 
distinctive  mark.1 


514.  Bell,  Black  &  Co.  v.  Bell  &  Co. 
August  1,  1876.     Bacon,  V.  C. 

THE  plaintiffs  being  manufacturers  of  lucifer  matches,  who 
sold  their  matches  in  boxes  bearing  a  label  of  deep  blue  and 
red  color  on  a  white  ground,  with  the  device  of  a  bell,  the 
defendants,  who  had  sold  the  same  article  in  boxes  bearing 
a  label  of  the  same  colors,  but  paler,  with  the  device  of  a 
small  bee-hive,  diminished  the  difference  between  the  labels 
by  deepening  the  colors  of  theirs  and  enlarging  the  bee-hive. 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendants  from  infringing  the  plaintiffs'  rights. 


515.  In  re  Meikle  [T.  M.  A.  1875]. 
August  7,  1876.     Hall,  V.  C.  —  24  W.  R.  1067;  1  Trade-Marks,  22. 

THE  Registrar  of  Trade-Marks  refused  to  register,  or  ad- 
vertise for  registration,  a  design  accompanied  by  the  words 
"  The  Registered  Seal  of  the  Bonus  Tea  Association"  unless 
the  word  "  registered  "  were  omitted,  on  the  ground  that  the 
Commissioners  of  Patents  had  directed  him  not  to  allow  that 
word  to  appear  in  connection  with  any  registered  trade-mark. 

On  summons  to  rectify  the  register,  by  the  insertion  of  the 
applicants'  name  as  proprietors  of  the  unaltered  mark,  ad- 
journed into  court: 

Held,  (1.)  that  an  order  could  not  be  made  for  the  regis- 
tration of  the  trade-mark  without  the  preliminary  advertise- 
ment required  by  the  rules  being  inserted  in  the  official  jour- 
nal; and  (2.)  that  the  court  would  not  interfere  with  the 
directions  given  to  the  registrar  by  the  Commissioners  of 
Patents  in  their  discretion,  or  direct  an  advertisement  of  the 
unaltered  mark  with  a  view  to  its  registration. 

1  It  is  not  to  be  understood  that  the     right  to  protect  the  features  which  were 
court  decided  that  by  merely  adopting     common  to  both  old  and  new. 
a  new  label  plaintiffs  abandoned  the 

287 


IN  RE  IMBS. 


516.  In  re  Roach. 

August  9,  1876.     U.  S.  Patent  Office:  Duett,  Comm.  —10  U.  S.  Pat.  Gaz. 

333. 

APPLICATION  for  the  registration  of  the  words  "  Croup 
Tincture  "  as  a  trade-mark  on  a  croup  medicine  refused,  on 
the  ground  that  the  words  were  merely  descriptive. 


517.  Western  v.  Heinmons. 

August  10,  1876.     Victoria  Sup.  Ct. :  MoleswOrth,  J.  — 2  Viet.  L.  R.  Eq. 

121. 

THE  plaintiff  being  the  inventor  of  a  secret  medicine  called 
"Weston's  Wizard  Oil"  and  the  defendants  having  manufact- 
ured this  medicine  by  agreement  with  him,  after  the  termi- 
nation of  the  agreement  the  defendants  continued  to  use  the 
recipe  and  name. 

Injunction  granted  to  restrain  the  defendants  from  using  or 
imparting  the  secret  recipe,  and  from  using  the  name,  except 
in  respect  of  medicines  manufactured  before  the  termination 
of  the  agreement,  but  the  order  to  be  discharged  if  the  plain- 
tiff should  fail  to  pay  for  any  ingredients,  etc.,  purchased  by 
the  defendants  for  the  purpose  of  the  medicine,  and  which 
would  have  been  charged  in  account  against  the  plaintiff  if 
the  connection  had  continued.  As  to  certain  other  medicines 
not  satisfactorily  proved  to  have  been  invented  by  the  plain- 
tiff, or  to  have  been  sold  in  Victoria  before  the  commence- 
ment of  his  connection  with  the  defendants,  no  order  made. 

518.  In  re  Imbs. 

August  29,  1876.     U.  S.  Patent  Office :  Doolittle,  Asst.  Comm.  —  10  U.  S. 

Pat.  Gaz.  463. 

A  DEVICE  consisting  of  the  letter  "  /"  within  a  shield,  the 
shield  being  surrounded  with  wheat  and  situated  above  the 
word  "  Charm,"  admitted  to  registration  as  a  trade-mark,  not- 
withstanding that  two  other  trade-marks  were  already  on  the 
register,  of  which  the  one  consisted  of  the  words  "  Grolden 

288 


CHARLESON  V.  CAMPBELL. 

Charm  "  above  a  monogram  of  the  letters  "  F.  Gr.  S.  $•  Co.," 
and  the  other  of  the  words  "  Attrition  Flour  "  above  a  shield 
on  which  'were  bunches  of  wheat,  on  the  ground  that  the  pro- 
posed trade-mark  was  not  sufficiently  similar  to  those  already 
registered  as  to  be  calculated  to  deceive. 


519.  Orr  v.    Diaper. 

November  6,  1876.     Hall,  V.  C.  —  4   Ch.  D.  92  ;  46  L.  J.  Ch.  41 ;  35  L. 
T.  N.  S.  468  ;  25  W.  R.  23. 

THE  plaintiffs  being  manufacturers  of  sewing  thread,  who 
sold  their  thread  in  England  and  abroad,  including  Valparaiso, 
under  certain  marks,  discovered  that  large  quantities  of  thread 
bearing  marks  similar  to  theirs  had  been  shipped  to  Valparaiso 
by  the  defendants  on  account  of  other  persons. 

Action  by  the  plaintiffs  for  discovery  of  the  names  and  ad- 
dresses of  the  consignors,  and  particulars  and  dates  of  the  con- 
signments of  marked  thread,  with  a  view  to  further  proceed- 
ings against  the  consignors.  Demurrer ;  overruled ;  and  Held, 
that  the  defendants  must  answer  within  a  month. 


520.  Charleson  v.  Campbell. 

November  17, 1876.     Cl.  of  Session.  —  Ct.  of  S  ess.  Cos.  4th  Ser.  IV.  149  ; 
14  Scot.  L.  Rep.  104. 

THE  plaintiff  being  the  proprietor  of  "  The  Station  Hotel, 
Forres"  the  defendant,  who  had  become  proprietor  of  "  The 
County  and  Family  Hotel"  in  Forres,  changed  its  name  to 
"  The  Royal  Hotel"  and  afterwards  to  "  The  Royal  Station 
Hotel,  Forres" 

Interdict  to  restrain  the  defendant  from  styling  his  hotel 
"  Station  Hotel  "  refused,  on  the  ground,  that  (1.)  the  name 
of  the  plaintiff's  hotel  was  a  mere  descriptive  title,  not  a 
specific  one,  and  that  there  was  no  averment  that  the  defend- 
ant had  assumed  his  title  with  fraudulent  intent ;  and  (2.) 
the  use  of  the  word  "  Royal  "  by  the  defendant,  as  part  of  the 
19  289 


CARMICHEL  v.  LATIMEE. 

name  of  his  hotel,  was  sufficient  to  distinguish  it  from   the 

plaintiff's.1 

« 

521.  Carmichel  v.  Latimer. 

November,  1876.     Rhode  I.  Sup.  Ct.  —  11  R.  I.  395  ;  23  Amer.  Rep.  481; 
16  Alb.  L.  J.  73. 

THE  plaintiffs  being  A.  Carmichel  &  Co.,  who  had  purchased 
the  good-will  of  the  business  of  Stillman  &  Co.,  woollen  man- 
ufacturers, and  with  it  the  right  to  use  the  tickets  or  labels  of 
that  firm,  bearing  the  name  "  Stillman  $•  Co."  the  defend- 
ants, Latimer,  Stillman  &  Co.,  leased  a  mill  formerly  used  by 
Stillman  &  Co.,  and  known  as  the  "  Seventh  Day  Mill"  or 
"  Stillman  Mill"  and  there  began  to  manufacture  goods  sim- 
ilar to  the  plaintiffs',  and  to  sell  them  ticketed  with  a  label 
containing  the  words  "  Stillman  Mill" 

On  motion  by  the  plaintiffs  for  an  injunction  to  restrain  the 
defendants  from  so  doing  : 

Held,  (1.)  that  the  plaintiffs'  right  to  use  the  name  "  Still- 
man £  Co."  there  being  no  person  of  that  name  in  the  firm, 
was  doubtful ;  (2.)  that  the  defendants  were  entitled  to  place 
the  name  of  their  mill  on  their  goods,  if  they  did  so  without 
fraud ;  (3.)  that  there  was  no  evidence  or  probability  of  fraud 
or  deception  ;  (4.)  and,  therefore,  that  the  motion  must  be 
refused. 

Per  Potter,  J.  "  In  some  of  the  cases  the  question  has  been  be- 
tween partners,  or  there  has  been  a  sale  of  a  business,  to  be  continued 
by  the  vendee,  and  more  or  less  connected  with  a  place  and  the  good- 
will of  the  business,  and  in  many  of  these  cases  the  sale  of  the  trade- 
mark would  be  upheld.  But  where  the  reputation  of  the  goods  and 
of  the  name  has  grown  out  of  excellence  of  manufacture,  depending 
on  the  honesty  and  skill  of  the  maker,  it  is  more  difficult  to  hold  that 
it  can  be  sold  to  a  stranger,  or  that  it  is  generally  assignable." 

Per  Durfee,  C.  J.     "  A  manufacturer  has  a  right  to  attach  his  own 

name  to  his  manufactures,  even  though  a  rival  manufacturer  of  the 

same  name,  who  has  given  it  prestige  in  the  market,  may  suffer  in 

consequence.   The  resulting  damage  is  damnum  absque  injurid.   And 

1  See  Howard  v.  Henriques,  108. 

290 


CARMICHEL  V.  LATIMER. 

if  a  manufacturer  has  the  right  to  label  the  products  of  his  mill  with 
his  name,  I  do  not  see  why  he  has  not  an  equal  right  to  label  them 
with  the  name  of  that  mill  itself,  provided  the  name  is  not  unfairly 
assumed  for  that  purpose,  or  fraudulently  employed." 

"  There  is  to  be  noticed  a  peculiarity  in  some  English  cases,  grow- 
ing out  of  the  practice  of  keeping  up  the  name  of  an  old  mercantile 
firm  for  several  generations,  or  successions  of  partners,  and  when  no 
partner  of  the  original  name  remained.  This  practice  is  noticed  and 
commented  on  in  Hall  v.  Barrows,  215  ;  The  Leather  Cloth  Go.  v. 
The  Amer.  Leather  Cloth  Co.  223 ;  and  by  Lord  Kingsdown,  in  the 
last  named  case  in  House  of  Lords,  mentioning  instances.  See,  also, 
Croft  v.  Day,  77.  In  such  cases  no  one  is  deceived.  The  name 
and  good-will  are  understood  by  the  public  to  belong  to  the  existing 
firm." 

"  In  the  present  case  there  has  been  no  continuation  of  an  old  firm 
by  a  gradual  change  of  its  members.  There  is  no  person  of  the  name 
of  Stillman  in  the  complainants'  firm,  and  the  goods  (although  one  of 
the  partners  was  superintendent  of  the  old  firm)  are  made  by  a  new 
firm,  and  in  another  place.  The  goods  had  (and  it  may  be  as  claimed, 
through  the  skill  of  Carmichel)  acquired  a  valuable  reputation ;  but 
that  old  firm  does  not  now  exist.  They  do  not  describe  themselves 
as  successors,  or  the  goods  as  made  by  one  who  was  formerly  super- 
intendent, but  by  the  old  firm  as  if  it  still  existed. 

"  It  has  not  been  claimed  by  the  respondents  that  the  complainants 
intend  any  deception.  The  facts  are  probably  pretty  well  understood 
by  the  large  dealers,  and  by  the  trade  generally.  And  if  we  look 
upon  the  mark  as  having  come  to  designate  merely  a  quality  or  sort 
of  goods,  in  that  light  the  complainants  would  not  be  entitled  to  the 
exclusive  use  of  it. 

"  On  the  other  hand,  the  defendants  hire  the  old  mill,  formerly  oc- 
cupied by  Stillman  &  Co.,  and  are  making  linseys  there.  While  there 
is  evidence  that  this  mill  was  often  called  the  '  Seventh  Day  Mill,' 
there  is  reliable  evidence  that  it  was  also  called  the  '  Stillman  Mill.' 
It  was  leased  to  the  defendants  by  that  name,  two  years  before  they 
began  the  manufacture  complained  of.  Persons  of  that  name  have 
been  engaged  in  Westerly  in  manufacturing  for  many  years,  and  there 
is  evidence  that  the  name  of  Stillman  has  also  been  applied  to  other 
mills.  The  defendants  have  a  right  to  call  their  mills  so,  if  they 
choose." 

291 


CHASE  V.  MAYO. 

Per  Potter,  J.  "  The  trouble  is,  the  label  of  the  defendants  does 
not  resemble  the  label  of  the  plaintiffs  closely  enough  to  deceive  any 
person  of  ordinary  discernment,  unless  the  name  '  Stillman,'  which  is 
prominent  in  both  labels,  may  mislead  him.  The  plaintiffs,  therefore, 
can  have  no  relief  unless  they  can  show  that  the  defendants  have  no 
right  to  use  that  name  as  they  do  use  it  in  their  labels.  How  can  the 
plaintiffs  do  this  when  the  surname  of  one  of  the  defendants  is  Still- 
man, and  when  the  mill  where  the  linseys  are  manufactured,  though 
it  may  be  popularly  known  as  the  '  Seventh  Day  Mill,'  is  also  prop- 
erly called  the  '  Stillman  Mill  ?  "' 1 


522.  In  re  The  Eagle  Pencil  Co. 

November  21,  1876.     U.  S.  Patent  Office :  Doolittle,  Asst.  Comm.  —  10  U. 
S.  Pat.  Gaz.  981. 

APPLICATION  for  the  registration  of  a  trade-mark  on  pencils 
stated  to  consist  essentially  in  the  combination  of  a  fraction 
with  the  whole  number  usually  marked  on  a  pencil,  as  1^  for 
1,  2|  for  2  (the  figure  of  an  eagle,  or  the. word  "Eagle"  or 
other  characters,  being  added  or  omitted  at  pleasure),  refused, 
on  the  ground  that  the  alleged  trade-mark  was  in  reality  a 
mere  indication  of  the  quality  of  the  article. 


523.  Chase  v.  Mayo. 
November  23,  1876.     Mass.  Sup.  Ct.  —  12l  Mass.  (7  Lathrop)  343. 

THE  plaintiff  being  a  packer  and  seller  of  fish,  who  was  also 
an  official  inspector  of  fish,  and  who  branded  the  parcels  of 
fish  packed  by  him  for  his  private  business  with  his  official 
brand,  the  defendant  branded  other  fish  with  a  similar  mark. 

Action  for  damages.  Held,  that  the  plaintiff  was  not  enti- 
tled to  recover  damages,  on  the  ground  that  a  public  officer 
could  not  acquire  any  private  right  of  trade-mark  in  the  brand 
used  by  him  in  his  official  capacity. 

1  See  Kidd  v.  Johnson,  669 ;  Pidding  v.  How,  60 ;  Bury  v.  Bedford,  222. 

292 


DECKER  V.  DECKER. 

524.  Booth  v.  Jarrett. 
November,  1876.    N.  Y.  C.  P.:   Van  Brunt,  J.  —  52  How.  Pr.  169. 

THE  plaintiff  being  Edwin  Booth,  who  had  established  a 
theatre  in  New  York  and  called  it  "  Sooth's  Theatre"  and 
who  had  assigned  the  lease  to  J.  B.  Booth,  under  whom  the 
defendants  claimed,  the  premises  having  been  described  in 
both  assignments,  and  also  in  various  mortgages  made  by  the 
plaintiff,  as  "  Sooth's  Theatre,"  the  defendants  continued  to 
call  the  theatre  by  that  name. 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendants  from  continuing  to  use  the  name  "  Sooth,"  in  con- 
nection with  the  theatre,  refused,  on  the  ground  that  the 
plaintiff's  name  had  become  affixed  to  the  establishment,  and 
did  not  imply  that  it  was  conducted  by  him.1 


525.  Decker  v.  Decker. 
November,  1876.     N.  Y.  Sup.  Ct.  :  Lawrence,  J.—  52  How.  Pr.  218. 

THE  plaintiffs  being  manufacturers  of  piano-fortes  in  New 
York,  trading  under  the  name  of  "  Decker  Brothers"  the  de- 
fendants, also  manufacturers  of  pianos  in  New  York,  trading 
as  "  Decker  $•  Barnes"  and  whose  senior  partner  had  pre- 
viously been  in  business  as  "Decker  $•  Co."  placed  on  their 
pianos  a  trade-mark  consisting  of  the  words  "  The  Decker 
Piano"  which  they  had  registered  in  the  U.  S.  Patent  Office. 

Motion  by  the  plaintiffs  for  an  injunction  to  restrain  the  de- 
fendants from  so  doing  refused,  on  the  ground  that  the  de- 
fendants could  not  be  restrained  from  the  use  of  their  own 
names,  if  no  fraud  appeared ;  and  further,  that  it  was  doubtful 
whether  the  court  was  empowered  to  interfere  with  a  trade- 
mark awarded  by  the  Commissioner  of  Patents.2 

1  See  Howard  v.  Henriques,  108.  2  See  Burgess  v.  Burgess,  117. 

293 


CHEAVIN  V.  WALKER. 

526.  Powell  v.  McNulty. 
November  27,  1876.     Bacon,  V.  C. 

THE  plaintiff  manufacturing  a  sauce  under  the  name  of 
"  Yorkshire  Relish"  the  defendant  sold  another  sauce  under 
the  same  name.  Injunction  granted  to  restrain  the  defendant 
from  so  doing.1 


527.  In  re  Pratt  and  Farmer. 

November  27,  1876.     U.  S,  Patent  Office:  Doolittle,  Assl.  Comm. —  10  U. 
S.  Pat.  Gaz.  866. 

APPLICATION  for  the  registration  of  the  figure  of  a  fish  as  a 
trade-mark  for  fishing  lines  refused,  on  the  ground  that  the 
figure  was  descriptive  of  the  purpose  of  the  article. 


528.    Cheavin  v.  Walker. 

December  8,  1876 ;  May  9,  1877.  Bacon,  V.  C.  —  5  Ch.  D.  854  ;  46  L. 
J.  Ch.  265  ;  35  L.  T.  N.  S.  757.  Ct.  of  App. :  Jessel,  M.  R.  ;  James 
and  Baggallay,  L.  JJ.  —  5  Ch.  D.  850  ;  46  L.  J.  Ch.  686  ;  36  L.  T.  N. 
S.  938. 

THE  plaintiff  being  G.  Cheavin,  who  manufactured  filters 
on  a  principle  patented  by  his  father,  S.  Cheavin,  in  1862  (but 
which  patent  lapsed  in  1865),  and  who  placed  on  his  filters  a 
tablet  with  the  words  "  G.  Cheavin' s  Improved  Patent  Q-old 
Medal  Self-Cleaning  Rapid  Water  Filter,  Boston,  England" 
beneath  a  medallion  with  the  royal  arms  and  the  words  "  By 
Her  Majesty's  Royal  Letters  Patent"  the  defendants,  Walker, 
Brightman  &  Co.,  manufactured  filters  on  the  principle  of  the 
same  patent,  and  placed  on  them  a  tablet  with  the  words  "  S. 
Cheavin' s  Patent  Prize  Medal  Self-Cleaning  Rapid  Water 
Filter,  Improved  and  Manufactured  by  Walker,  Brightman  $ 
Co.,  Boston,  England" 

Action  for  an  injunction  to  restrain  the  defendants  from  in- 
fringing the  plaintiff's  rights. 

1  This  case  affords  a  striking  illustration  of  the  use  of  a  geographical  name  in 
other  than  a  geographical  sense. 

294 


DUNBAR  v.  GLENN. 

Held,  by  the  V.  C. :  (1.)  that  the  plaintiff  had  acquired  a 
right  of  trade-mark  in  the  tablet ;  (2.)  that  this  right  had 
been  fraudulently  infringed  by  the  defendants  ;  (3.)  that  the 
plaintiff  was  not  deprived  of  his  right  to  an  injunction  by  his 
reference  to  the  lapsed  patent ;  and  (4.)  that  the  injunction 
must  be  granted. 

Held,  by  the  Court  of  Appeal:  (1.)  that  the  alleged  trade- 
mark was  a  mere  inscription  and  not  a  trade-mark  ;  (2.) 
that  in  any  case  the  defendants  had  committed  no  infringe- 
ment, but  had  merely  stated  the  principle  on  which  the  filter 
was  manufactured  by  them  ;  (3.)  that  the  plaintiff  was  dis- 
entitled by  reason  of  his  reference  to  the  lapsed  patent  being 
such  as  to  induce  the  belief  that  it  was  still  in  force  ;  and 
(4.)  that  the  injunction  must  be  dissolved  and  the  action  dis- 
missed. 

Per  Jessel,  M.  R.  (5  Ch.  D.  862).  "You  may  state  in  so  many 
words,  or  by  implication,  that  the  article  is  manufactured  in  accord- 
ance with  a  patent  which  has  expired.  But  if  you  suggest  that  it  is 
protected  by  an  existing  patent,  you  cannot  obtain  the  protection  of 
that  representation  as  a  trade-mark.  Protection  only  extends  to  the 
time  allowed  by  the  statute  for  the  patent,  and  if  the  court  were  af- 
terwards to  protect  the  use  of  the  word  as  a  trade-mark,  it  would  be 
in  fact  extending  the  time  for  protection  given  by  the  statute.  It  is, 
therefore,  impossible  to  allow  a  man  who  has  once  had  the  protection 
of  a  patent  to  obtain  a  further  protection  by  using  the  name  of  his  pat- 
ent as  a  trade-mark." 

Per  James,  L.  J.  "  It  is  impossible  to  allow  a  man  to  prolong  his 
monopoly  by  trying  to  turn  a  description  of  the  article  into  a  trade- 
mark. Whatever  is  mere  description  is  open  to  all  the  world."  l 


529.  Dunbar  v.  Glenn. 
January,  1877.     Wisconsin  Sup.  Ct.  — 42  Wis.  118. 

THE  plaintiff  being  the  proprietor  of  a  spring  of  mineral 
water,  which  he  sold  under  the  name  of  "  Bethesda  Mineral 
Water,"  styling  the  spring  the  "  Bethesda  Mineral  Spring" 

1  See  Pidding  v.  How,  60  ;  Leather  Cloth  Co.  v.  Amer.  Leather  Cloth  Co.  223. 

295 


BARROWS  V.  THE  PELSALL  COAL  AND  IRON  COMPANY. 

the  defendants,  "who  were  the  proprietors  of  a  neighboring 
spring,  which  they  alleged  to  contain  exactly  the  same  water, 
began  to  call  their  spring  and  water  "  Grlenn-Bethesda  Min- 
eral Spring  "  and  "  Water,"  and  to  issue  circulars  using  those 
terms,  and  stating  that  their  water  was  "  identical  with  Be- 
thesda  "  water. 

Injunction  granted  to  restrain  the  defendants  from  using 
the  name  "  Bethesda  Mineral  Water "  in  connection  with 
the  water  of  their  spring,  and  from  issuing  circulars  or 
trade-cards,  etc.,  representing  their  water  to  be  "  Bethesda  " 
water. 

"  Where  the  trade-mark,  in  its  original  signification,  or  by  associa- 
tion, distinctively  points  to  the  origin  or  ownership  of  the  article  to 
which  it  is  applied,  it  will  be  protected.  But  where  it  is  a  generic 
or  geographical  name,  designating  a  city  or  district  of  country,  or  is 
merely  descriptive  of  the  article  manufactured,  and  can  be  employed 
with  truth  by  other  manufacturers,  it  is  not  entitled  to  legal  protec- 
tion as  a  trade-mark."  1 


530.  Barrows  v.  The  Pelsall  Coal  and  Iron  Company. 
January  11,  1877.     Hdl,  V.  C. 

THE  plaintiffs  being  manufacturers  of  iron,  which  they 
stamped  with  the  letters  "  B.  B.  J?."  (the  initials  of  the  orig- 
inal partners  in  the  firm — Bradley,  Barrows  &  Hall)  in 
Roman  characters  and  a  crown,  the  defendants,  carrying  on 
business  in  succession  to  Messrs.  Boaz  Bloomer  &  Sons, 
stamped  their  iron  (as  that  firm  had  done)  with  the  Roman 
letters  "  B.  B.  S"  and  a  crown.  In  1874  the  plaintiffs  com- 
menced a  suit  for  an  injunction,  which  was  compromised, 
the  defendants  undertaking  to  discontinue  the  use  of  their 
mark.  The  defendants  subsequently  took  proceedings  to  pro- 
cure the  registration  of  the  letters  "  B.  B.  /£,"  in  italic  char- 
acters, with  a  crown,  as  their  trade-mark  under  the  Trade- 
Marks  Act,  1875. 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 

1  See  Congress,  etc.  Spring  Co.  v.  High  Rock  Congress  Spring  Co.  354. 

296 


MOET  V.  CLYBOUW. 

the  defendants  from  using  or  procuring  the  registration  of  the 
mark  in  question. 

531.  Hennessy  &  Co.  v.  Rohmann,  Osborne  &  Co. 

January  18,  1877.     Matins,  F.  C.  —  36  L.  T.  N.  S.  51. 

On  an  ex  parte  application  on  the  part  of  the  plaintiffs, 
being  brandy  merchants,  who  alleged  that  the  defendants 
had  obtained  cases  of  the  plaintiffs',  and  filled  them  with  in- 
ferior brandy  : 

Interim  injunction  granted,  to  restrain  the  defendants  from 
selling  brandy  not  the  plaintiffs',  so  as  to  deceive,  and  order 
made,  under  Order  LIL,  Rule  3,  for  inspection  of  the  de- 
fendants' premises  to  be  made  and  samples  taken  by  a  proper 
person. 


532.  Grillon  v.  Guenin. 

January  19,  1877.     Bacon,  V.  C.—  W.  N.  1877,  p.  14. 

THE  plaintiff  being  a  manufacturer  of  lozenges  which  he 
sold  in  boxes  labelled  with  the  words  "  Tamar  Indien"  the 
defendant  sold  other  lozenges  under  the  name  of  "  American 
Tamar" 

Injunction  granted  to  restrain  the  defendant  from  infring- 
ing the  plaintiff's  trade-mark  ;  and 

Held,  that  a  defence  that  the  words  "  Tamar  Indien  "  were 
merely  descriptive  of  the  composition  of  the  plaintiff's  loz- 
enges failed. 

533.  Moet  v.  Clybouw. 
January  20,  1877.     Jessel,  M.  R. 

THE  plaintiffs  being  Moet  and  Chandon,  wine-growers, 
who  sold  their  champagne  in  bottles  closed  with  corks  branded 
with  the  letters  "  M.  £  (7."  in  a  circle  on  the  bottom,  and 
the  word  "  England  "  on  the  side,  the  defendant  sold  other 
champagne  in  bottles  closed  with  corks  similarly  marked, 
claiming  to  use  the  initials  in  right  of  a  firm  of  "  Meadows  £ 

297 


DENCE  V.  MASON. 

Clybouw"  to  whose  business  he  alleged  himself  to  have  suc- 
ceeded, and  claiming  to  use  the  word  "  England  "  as  common 
to  the  trade. 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendant  from  infringing  the  plaintiffs'  rights. 

534.  Dence  v.  Mason.     (1.) 

January  25,  1877;  February  12,  1878.     Malins,  V.  C. —W.  N.  1877,  p. 
23;  1878,  p.  42  ;  L.  J.  Notes  of  Cases,  1877,  p.  33. 

THE  plaintiffs  having  recently  acquired  a  provision  dealer's 
business  in  Little  Stanhope  Street,  Mayfair,  carried  on  under 
the  name  of  "  Brand  $•  Co."  and  which  name  was  placed  on 
all  the  packets  of  essence  of  beef  and  other  preparations  made 
by  the  firm ;  F.  Mason,  who  had  been  for  many  years  in  the 
employ  of  the  plaintiffs'  predecessor  in  business,  and  who  al- 
leged that  during  that  period  he  had  been  the  discoverer  of 
the  essence  of  beef,  left  their  service,  and  began  to  deal  in  the 
same  class  of  goods,  in  partnership  with  one  Brand  as  "  Brand 
$•  Mason"  In  consequence  of  proceedings  taken  by  the  plain- 
tiffs, this  name  was  changed  to  "  Mason  $  Brand"  and  shortly 
afterwards  Brand  refused  to  continue  in  the  partnership,  or 
to  permit  the  defendant  to  make  use  of  his  name,  but  the  de- 
fendant nevertheless  continued  to  trade  under  the  name  of 
"  Mason  $  Brand"  and  to  represent  that  he  was  the  original 
maker  of  the  article. 

On  motion  by  the  plaintiffs  for  an  injunction  to  restrain  the 
defendant  from  infringing  their  rights,  and  again  at  the  hear- 
ing of  the  action : 

Held,  (1.)  that  during  the  continuance  of  the  partnership 
between  Mason  and  Brand  it  was  impossible  to  prohibit  en- 
tirely the  use  of  the  latter's  name  in  the  business ;  (2.)  but 
that  after  the  retirement  of  Brand  the  defendant  was  not  en- 
titled to  continue  to  use  his  name  for  the  purpose  of  imitating 
the  plaintiffs'  name  and  marks,  although  he  was  at  liberty  to 
manufacture  the  same  article  as  the  plaintiffs  under  his  own 
name ;  (3.)  that  in  arranging  with  the  proprietor  of  a  small 

298 


LINOLEUM  MANUFACTURING  COMPANY  V.  NAIRN. 

shop  in  the  same  street  as  the  plaintiffs  for  the  exhibition  on 
her  shop-front  of  the  words  "  Agent  for  Mason  $•  Brand's 
Essence  of  Beef"  the  words  "  Agent  for  "  being  in  small  and 
the  rest  in  large  letters,  the  defendant  had  acted  in  a  manner 
intended  and  calculated  to  deceive ;  (4.)  that,  supposing  the 
defendant  to  have  discovered  the  recipe  of  the  essence  of  beef, 
which  was  not  established,  he  was  nevertheless  not  entitled  to 
represent  himself  as  the  original  maker,  since  whatever  essence 
of  beef  he  had  made  had  been  made  by  him  as  the  servant  of 
the  plaintiffs  or  their  predecessors,  but  that  he  might  state 
that  he  had  been  in  the  plaintiffs'  service,  and  had  there  learnt 
the  recipe  ;  (5.)  and  that  an  injunction  must  be  granted  to 
restrain  the  defendant  in  the  particulars  above  mentioned. 

535.  Ex  parte  Grimshaw  [T.  M.  A.  1875]. 

January  25,  1877.     Hall,  V.  C.  —W.  N.  1877,  p.  24  ;  L.  J.  Notes  of  Cos. 
1877, p.  24;  1  Trade-Marks,  23. 

Two  applications  being  made  for  the  registration  of  the 
same  trade-mark: 

Motion  by  one  of  the  two  applicants  for  a  direction  that  the 
case  should  be  heard  on  motion,  and  not  on  special  case  as 
directed  by  the  rules,  refused,  on  the  ground  that  the  method 
of  procedure  directed  by  the  rules  was  the  more  convenient. 

536.  Linoleum  Manufacturing  Company  v.  Nairn. 

February  1,1877;  January  30,  1878.  Hall,  V.  C.  Chanc.  Div. :  Fry,  J.  — 
7  Ch.  D.  834;  47  Z.  J.  Ch.  430;  38  L.  T.  N.  S.  448;  26  W.  R.  463  ;  1 
Trade- Marks,  291. 

THE  plaintiffs  being  manufacturers,  under  certain  patents 
recently  expired,  of  a  new  species  of  floor-cloth,  which  they 
called  "  Linoleum  Floor-cloth"  or  "  Linoleum"  and  who  had 
used  and  registered  as  their  trade-mark  a  device  consisting  of 
a  fleur-de-lys  in  a  lozenge,  with  the  words  "  Linoleum  Floor- 
cloth "  and  "  F.  Walton's  Patent"  the  defendants  made  prep- 
aration, upon  the  expiration  of  the  patents,  for  the  manufact- 
ure and  sale  of  a  similar  article,  under  the  name  of  "Linoleum 

299 


EX  PARTE  YOUNG  ;  RE  LEMON  HART  &  SON. 

Floor-cloth"  and  adopted  a  trade-mark  entirely  different  from 
the  plaintiffs',  consisting  of  a  bunch  of  thistles  with  the  name 
"Nairn's." 

On  motion  by  the  plaintiffs  for  an  injunction  to  restrain  the 
defendants  from  using  the  word  "  Linoleum  :  " 

Jleld,  by  Hall,  V.  C.,  that  nothing  having  yet  been  done, 
and  the  question  being  purely  one  of  the  right  to  use  the  word, 
the  matter  must  stand  over  till  the  hearing. 

At  the  hearing  of  the  action  : 

Held,  by  Fry,  J. :  (1.)  that  the  word  "  Linoleum,"  as  in- 
serted in  the  plaintiffs'  trade-mark,  did  not  form  an  essential 
feature  of  the  mark  ;  (2.)  that  the  word  being  descriptive  of 
a  substance  which  the  defendants  were  entitled  to  make,  they 
were  entitled  to  use  it  as  the  name  of  the  substance  ;  (3.) 
that  the  fact  that  the  word  had  been  previously  used  by  the 
plaintiffs  alone,  they  being  hitherto  patentees,  did  not  give 
them  an  exclusive  right  in  it,  since  a  name  appropriated  to  an 
article  made  under  a  patent  was  indicative  in  the  first  place  of 
the  article  so  made,  and  only  in  the  second  place  of  the  manu- 
facturers ;  (4.)  and  that  the  injunction  must,  therefore,  be 
refused. 

"  Until  some  other  person  is  making  the  same  article,  and  is  at 
liberty  to  call  it  by  the  same  name,  there  can  be  no  right  acquired  by 
the  exclusive  use  of  a  name,  as  showing  that  the  manufacture  of  one 
person  is  indicated  by  it,  and  not  the  manufacture  of  another."  x 


537.  Ex  parte  Young ;  Re  Lemon  Hart  &  Son. 

February  3,  1877.     London  Ct.  of  Bankruptcy :  Spring  Rice,  Reg.  for  C.  J. 

LEMON  HART  &  SON,  wine  merchants,  whose  trade-mark 
consisted  of  the  initials  "  L.  If.  $  $.,"  having  been  compelled 
to  liquidate  by  arrangement,  and  the  partnership  property, 
good-will,  etc.,  having  been  sold  by  the  trustee  in  the  liquida- 
tion, the  purchaser  became  bankrupt  without  having  fully  paid 
the  purchase  money. 

1  See  Burnett  v.  Phalon,  277  ;  Singer  Man.  Co.  v.  Wilson,  477. 
300 


STRAHAN  &  CO.,  LIMITED,  V.  KING  &  CO. 

Motion  by  the  trustee  in  liquidation  for  an  order  for  the 
payment  to  him  of  the  proceeds  of  a  sale  of  the  trade-mark 
by  the  trustee  in  bankruptcy  refused,  on  the  ground  that  the 
trade-mark  passed  to  the  purchaser  from  the  trustee  in  liqui- 
dation, under  the  assignment  from  the  latter,  and  that  the 
purchaser's  trustee  in  bankruptcy  was  entitled  to  the  benefit 
of  it;  and 

Jleld,  that  the  trade-mark  was  a  chattel  within  sect.  15, 
sub-s.  5  of  the  Bankruptcy  Act,  1869. 


538.  Harrington  v.  Libby. 

February,  1877.     U.  S.    C.   C.  S.  Dt.  of  N.   Y.  :  Johnson,  J.  —  12U.S. 

Pat.  Gaz.  188. 

THE  plaintiff,  a  manufacturer  of  paper  collars,  sold  his  goods 
in  small  pails  of  ornamented  tin ;  he  was  the  first  to  put  up 
paper  collars  in  pails,  and  registered  the  form  of  the  pail  as  a 
trade-mark ;  the  defendant  sold  his  collars  in  pails  of  the  same 
size  as  those  of  the  plaintiff,  but  differently  ornamented. 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the  de- 
fendant from  selling  his  collars  in  pails,  as  being  an  infringe- 
ment of  the  plaintiff's  trade-mark,  refused,  on  the  ground  that 
the  form  of  the  pail  could  not  constitute  a  trade-mark,  and 
that  the  registration  was  without  effect.1 


539.  Strahan  &  Co.,  Limited,  v.  King  &  Co. 
February  22,  1877.     Malins,  V.  C. 

THE  plaintiffs  being  the  proprietors  of  "The  Contemporary 
Review"  the  defendants,  the  publishers  and  an  ex-editor  of 

1  This  case,  like  Moorman  v.  Hoge,  lars,  and  that  the  registration  of  such  a 
873,  which  see,  has  been  supposed  by  pail  as  a  trade-mark  was  therefore  nu- 
some  to  point  to  the  conclusion  that  gatory.     The  two  pails  were  not  alike, 
the  imitation  of  the  appearance  of  a  and  there  was  no  proof  of  actual  mis- 
form  or  style  of  package  will  not  be  re-  take;  it  was  manifestly  impossible  to 
strained.     What  the  court  decided  was  grant  the  injunction, 
that  no  one  could  enjoy  the  exclusive          See  Williams  v.  Johnson,  150. 
right  to  use  a  tin-pail  as  a  box  for  col- 

301 


IN  RE  BARROWS. 

that  periodical,  made  preparations  for  publishing  a  new  maga- 
zine or  review  under  the  title  of  "  The  Nineteenth  Century" 

Motion  by  the  plaintiffs  for  an  injunction  to  restrain  the 
defendants  from  so  doing,  and  from  representing  their  new 
magazine  to  be  a  continuation  of  "  The  Contemporary  Review" 
and  from  misrepresenting  the  principles  or  objects  of  the  latter 
periodical,  refused,  on  the  ground  that  the  defendants  were 
engaging  in  a  perfectly  fair  competition  with  the  plaintiffs,  as 
they  had  a  right  to  do,  and  that  they  had  not  been  guilty  of 
any  misrepresentation  with  regard  to  either  their  own  in- 
tended publication  or  the  plaintiffs'.  1 


54O.  In  re  Barrows  [T.  M.  A.  1875-6]. 

March  1,  April  26,  1877.  Malins,  V.  C.  —  5  Ch.  D.  353;  46  L.  J.  Ch. 
450;  36  L.  T.  N.  S.  291;  25  W.  R.  407;  1  Trade-Marks,  122.  Ct.  of 
App, :  Jessel,  M.  R. ;  James  and  Baggallay,  L.  JJ.  —  5  Ch.  D.  364  ;  46 
L.  J.  Ch.  725;  36  L.  T.  N.  S.  780;  25  W.  R.  564;  1  Trade-Marks,  1 26. 

ON  motion  by  Barrows  &  Sons,  successors  to  Bradley,  Bar- 
rows &  Hall,  iron  manufacturers,  of  Bloomfield  Works,  Staf- 
fordshire, for  the  separate  registration  of  numerous  trade- 
marks used  by  them  in  their  business,  consisting  respectively 
of  the  letters  "  B.  B.  H"  (being  the  initials  of  the  former 
firm),  and  of  the  word  '•'•Bloomfield"  or  "-Bloom"  (repre- 
senting the  name  of  the  works),  used  with  a  variety  of  marks 
indicative  of  quality,  as  "  Best"  "  Best,  Best,"  etc.,  or  com- 
mon to  the  trade,  as  the  figure  of  a  crown,  of  a  horse-shoe,  etc., 
and  the  Registrar  of  Trade-Marks  having,  by  direction  of  the 
Commissioners  of  Patents,  declined  to  place  on  the  register 
all  the  combinations,  but  offered  to  register  any  one  of  them  : 

Held,  by  the  V.  C. :  (1.)  that  every  valid  mark  used  before 
the  Act  of  1875  was  entitled  to  separate  registration  under 
it ;  (2.)  that  the  court  was  not  bound  by  the  direction  of  the 
Commissioners-  of  Patents  ;  (3.)  that  the  motion  must,  there- 
fore, be  granted. 

Held,  by  the  Court  of  Appeal,  that  the  proper  mode  would 
1  See  Hogg  v.  Kirby,  10. 
'302 


GILMAN  V.  HUNNEWELL. 

be  to  register  the  letters  "  B.  B.  H"  and  the  words  "  Bloom- 
field  "  and  "  Bloom"  being  the  essential  particulars,  sepa- 
rately, a  note  being  appended  in  each  case,  to  the  effect  that 
the  mark  might  be  used  either  alone,  or  in  combination  with 
common  marks,  words  of  quality,  etc.,  so  that  the  various 
combinations  would  be  protected  by  representative  registra- 
tion. , 

541.  Gilman  v.  Hunnewell. 
March  1,  1877.     Mass.  Sup.  Ct.  —  122  Mass.  (8  Lathrop)  139. 

THE  plaintiffs  having  purchased  from  John  L.  Hunnewell 
certain  medicines  and  the  wrappers,  labels,  trade-marks,  etc., 
used  upon  them,  the  defendant,  Edwin  Hunnewell,  who  had 
formerly  been  in  John  L.  Hunnewell's  employ,  set  up  in 
business  in  the  same  house  as  the  plaintiffs  as  '•'•Hunnewell 
$•  Co."  and  made  and  sold  similar  medicines  with  wrappers 
and  labels  similar  in  many  respects  to  the  plaintiffs',  except 
that  for  "  John  L.  Hunnewell "  "  Hunnewell  $  Co."  was  sub- 
stituted. 

Injunction  to  restrain  the  defendant  from  infringing  the 
plaintiffs'  rights  refused,  on  the  ground,  that  (1.)  the  plain- 
tiffs could  not  have  a  right  of  trade-mark  in  such  words  as 
"  cough  remedy"  or  *'  a  sure  remedy  for  chronic  or  common 
cough,  sore  throat,  and  other  minor  throat  complaints  so  often 
by  neglect  the  forerunner  of  consumption;  "  (2.)  there  was  not 
such  similarity  as  to  be  likely  to  deceive ;  (3.)  no  intention  to 
defraud  was  proved ;  (4.)  the  circulars  distributed  by  the 
defendant  to  his  customers  correctly  stated  his  former  relation 
to  John  L.  Hunnewell. 

"  A  trade-mark  may  consist  of  a  name,  or  a  device,  or  a  peculiar 
arrangement  of  words,  lines,  or  figures  in  the  form  of  a  label,  which 
has  been  adopted  and  used  by  a  person  in  his  business  to  designate 
goods  of  a  particular  kind  manufactured  by  him,  and  which  no  other 
person  has  an  equal  right  to  use.  The  right  in  a  trade-mark,  so  ap- 
plied, is  recognized  as  property,  which  a  court  of  chancery  will  protect 
by  injunction. 

*'  A  mere  general  description,  by  words  in  common  use,  of  a  kind 

303 


KINNEY  V.  BASCH. 

of  article,  or  of  its  nature  or  qualities,  cannot  of  itself  be  the  subject 
of  a  trade-mark. 

"  A  person  may  have  a  right  in  his  own  name  as  a  trade-mark,  as 
against  a  person  of  a  different  name.  But  he  cannot  have  such  a 
right  as  against  another  person  of  the  same  name,  unless  the  defend- 
ant uses  a  form  of  stamp  or  label  so  like  that  used  by  the  plaintiff  as 
to  represent  that  the  defendant's  goods  are  of  the  plaintiff's  manu- 
facture. 

"  The  court  will  not  restrain  a  defendant  from  the  use  of  a  label, 
on  the  ground  that  it  infringes  the  plaintiff 's  trade-mark,  unless  the 
form  of  the  printed  words,  the  words  themselves,  and  the  figures, 
lines,  and  devices,  are  so  similar  that  any  person,  with  such  reason- 
able care  and  observation  as  the  public  generally  are  capable  of  using 
and  may  be  expected  to  exercise,  would  mistake  the  one  for  the 
other."  1 


542.  Kinney  v.  Basch. 

March,  1877.     N.  Y.  Sup.  Ct. :   Van  Brunt,  J.  —  l  Trade-Marks,  183;  16 
Am.  Law  Reg.  N.  Sf  596. 

THE  plaintiff  being  a  manufacturer  of  cigarettes,  on  which 
he  used  a  label  containing  a  device  of  sun's  rays,  the  words 
"  St.  James"  and  the  symbol  "  £,"  the  defendants  sold  other 
cigarettes  with  a  label  containing  the  words  "  St.  James1  Par- 
ish Perique  Cigarettes "  (of  which  the  words  "  St.  James " 
were  much  the  more  conspicuous),  and  the  symbol  "  £"  in  the 
same  style  as  the  plaintiff's,  but  the  labels  were  in  other 
respects  different. 

Injunction  granted  to  restrain  the  defendants  from  using 
the  device  of  the  sun's  rays,  and  also  the  symbol  "  \  "  and 
words  "  St.  James"  alleged  to  be  the  plaintiff's  trade-marks, 
on  the  ground  that  whether  the  plaintiff  had  or  had  not  an 
exclusive  right  in  the  marks,  the  defendants  had  acted  so  as 
to  deceive. 

Per  Van  Brunt,  J.  "  The  use  of  any  words,  geographical  or  oth- 
erwise, numerals  or  symbols,  adopted  for  the  purpose  of  defrauding 
the  public,  will  be  restrained  by  the  court.  It  is  the  duty  of  the  court 

1  See  Amoskeag  Co.  v.  Spear,  100. 

304 


CABNRICK  V.  MORSON. 

to  protect  the  public  from  fraud,  even  at  the  suit  of  a  plaintiff  who 
has  not  the  exclusive  right  to  the  use  of  such  words,  numerals,  or 
symbols." 

"  It  has  been  urged  upon  the  part  of  the  defendants  that  geograph- 
ical names  cannot  be  the  subject  of  a  trade-mark ;  neither  can  numer- 
als, which  only  serve  to  indicate  the  nature,  kind,  or  quality  of  an 
article. 

"  It  is  true  that  the  cases  cited  by  the  defendants  sustain  these 
propositions ;  but  the  later  cases  have  proceeded  upon  different  and 
more  equitable  principles  in  defining  the  grounds  upon  which  courts 
of  equity  interfere  in  cases  of  this  description. 

u  This  interference,  instead  of  being  founded  upon  the  theory  of 
protection  to  the  owners  of  trade-marks,  is  now  supported  mainly  to 
prevent  frauds  upon  the  public.  If  the  use  of  any  words,  numerals, 
or  symbols  is  adopted  for  the  purpose  of  defrauding  the  public,  the 
courts  will  interfere  to  protect  the  public  from  such  fraudulent  intent, 
even  though  the  person  asking  the  intervention  of  the  court  may  not 
have  the  exclusive  right  to  the  use  of  these  words,  numerals,  or  sym- 
bols. This  doctrine  is  fully  supported  by  the  latest  English  cases  ; 
....  and,  also,  in  the  case  of  Newman  v.  Alvord"  [282].1 


543.  Carnrick   v.  Morson. 

March  22,  1877.     Bacon,  V.  C.  —  L.  J.  Notes  of  Cos.  1877,  p.  71;  Chem- 
ist and  Druggist,  1877,  p.  161. 

THE  plaintiff,  being  the  manufacturer  of  a  medical  com- 
pound which  he  called  " Lacto-Peptine"  the  defendants  sold 
a  preparation  in  bottles  labelled  "  Lacto-Pepsine" 

On  motion  by  the  plaintiff  injunction  granted  to  restrain 
the  defendants  from  using  the  name  ;  and  Held,  that  a  defence 
that  the  word  "  Lacto-Peptine "  was  descriptive  of  the  com- 
position of  the  plaintiff's  article  failed.2 

1  See  Lee  v.  Haley,  325.  extreme  views  which  have  been  repeat- 

3  The  circumstances  of  this  case  were  edly   affirmed  by  the   English   courts 

of  an  exceptional  character;  it  is  not  to  concerning  descriptive  words. 

be  regarded  as  a  departure  from  the 

20  305 


STEINTHAL  V.  SAMSON. 


544.  In   re   Park. 

March  26,   1877.      U.  S.  Patent  Office  :   Spear,  Comm.  —  12  U.  S.  Pat. 

Gaz.  2. 

ON  an  application  for  the  registration  as  labels  of  three 
labels,  each  including  a  figure  of  a  swan,  or  the  word 
"  Swan"  which  figure  and  word  the  applicant  had  previously 
sought  unsuccessfully  to  register  as  his  trade-mark  on  gin : 
Held,  that,  before  this  figure  or  word  could  be  registered  as 
part  of  a  label,  the  applicant  must  establish  his  right  of 
trade-mark  therein. 


545.  Allsop   v.  Walker  [T.  M.  A.  1875]. 
April  10,  1877.     Jessel,  M.  R. 

THE  defendants  having  applied  for  the  registration  of  a 
device  consisting  of  a  female  hand  pointing  horizontally,  with 
the  letters  "  W.  $  6r."  upon  it,  as  their  trade-mark  for  bot- 
tled ale  and  porter,  the  plaintiffs  opposed  the  application,  on 
the  ground  that  the  use  of  the  mark  by  the  defendants,  if 
permitted,  would  be  calculated  to  deceive,  by  reason  of  the 
similarity  between  that  mark  and  their  own  trade-mark  on 
the  same  article,  consisting  of  a  male  hand  pointing  upwards. 
Special  case  stated  by  the  Registrar  of  Trade- Marks. 

Held,  that  the  mark  too  nearly  resembled  the  plaintiffs' 
mark  to  be  admitted  to  registration  in  the  same  class. 

546.  Steinthal  v.  Samson. 
April  17,  1877.     Ct.  of  App. :  James,  Mellish,  and Baggallay,  L.  JJ. 

THE  plaintiffs  being  manufacturers  and  exporters  of  cotton 
goods,  to  whom  the  defendant,  a  former  partner,  had,  on  the 
dissolution  of  the  partnership,  assigned  all  his  interest  in  the 
business,  the  deed  containing  a  proviso  to  the  effect  that  the 
defendant  should  be  at  liberty  to  continue  to  carry  on  a  sim- 
ilar business,  and  to  use  the  trade-marks  of  the  firm,  except 
the  private  arms,  crest,  and  motto  of  the  plaintiffs,  the  motto 

3U6 


CAMPBELL  V.  HOLLINS. 

consisting  of  the  word  "  Excelsior,"  the  defendant  subse- 
quently sold  cotton  goods  bearing  that  word,  but  not  used  as 
a  heraldic  device. 

Injunction  to  restrain  the  defendant  from  the  breach  of  the 
covenant  alleged  to  be  thereby  committed  refused,  on  the 
ground  that  the  restrictive  covenant  had  reference  only  to  the 
heraldic  use  of  the  plaintiffs'  arms,  crest,  and  motto,  and  not 
to  the  use  of  the  word  **  Excehior  "  in  another  manner. 


547.   In  re  The  Goodyear  Rubber  Co. 

April  25, 1877.     U.  S.  Patent  Office  :  DoolMe,  Asst.  Comm.  —  11    U.    S. 
Pat.  Gaz.  1062. 

APPLICATION  for  the  registration  of  the  words  "  Crack- 
proof"  as  a  trade-mark  on  india-rubber  goods,  refused,  on  the 
ground  that  the  term  was  merely  descriptive  of  quality.1 

548.   Campbell  v.  Hollins. 
April  26,  1877.     Malins,  F.  C.    House  of  Lords. 

THE  appellant  (defendant)  Campbell  and  the  respondent 
(plaintiff)  Hollins  having  been  in  partnership  as  manufact- 
urers of  china  and  encaustic  tiles,  separated  the  two  busi- 
nesses in  1859,  the  former  being  styled  by  them  "  Herbert 
Minton  $•  Co"  and'  the  latter  "  Minton,  Hollins  £  Co."  and 
the  respondent  (defendant)  Taylor  was  afterwards  taken  into 
the  latter  firm.  On  the  retirement  of  Taylor  in  1868,  the 
partnership  was  dissolved,  Campbell  taking  the  china  busi- 
ness, Hollins  the  tile  business.  Taylor  having  subsequently 
begun  to  manufacture  tiles  as  "  Robert  Minton,  Taylor  $• 
Co.,  Hollins  commenced  proceedings  to  restrain  him  from  so 
doing,  but  these  were  discontinued  on  Taylor's  undertaking 
not  to  trade  in  any  other  name  than  "Robert  Minton  Taylor" 
Campbell  purchased  Taylor's  business  in  1875,  and  announced 
his  intention  of  continuing  it  as  "  The  Minton  Brick  and 
Tile  Co." 

1  See  Burnett  v.  Phalon,  277. 
307 


LEDGER  V.  RAY. 

Action  by  Hollins  for  an  injunction  to  restrain  the  defendant 
Campbell  from  using  the  name  "  Minton." 

Held,  by  the  V.  C.  and  House  of  Lords,  that  the  plaintiff 
was  entitled,  as  against  the  defendant,  to  the  exclusive  use  of 
the  name  "  Minton  £  Co."  in  connection  with  the  tile  busi- 
ness, and  that  an  injunction  must  be  granted  to  restrain  the 
infringement  of  that  right  by  Campbell.1 

549.  Hennessy  v.  Cooper. 
April  26,  1877.     Malins,  V.  C. 

THE  plaintiffs  being  brandy  merchants,  the  defendant  sold 
his  own  brandy  in  cases  formerly  belonging  to  the  plaintiffs, 
and  still  bearing  their  marks. 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendant  from  so  doing. 


550.  Ledger  v.  Bay. 

April  28,  May  3,  1877.      Bacon,  F.  C.     Ct.  of  App. :  James,  Baggallay, 
Bramwell,  and  Brett,  L.  JJ. 

THE  plaintiff  being  the  proprietor  of  a  dramatic  and  sport- 
ing newspaper  called  The  Era,  which  had  for  many  years 
published  articles  signed  "  Touchstone"  the  defendant  made 
preparations  for  the  publication  of  a  new  newspaper  on  the 
same  subjects,  under  the  title  of  Touchstone,  or,  the  New  Era. 

Action  by  the  plaintiff  for  an  injunction  to  restrain  the  de- 
fendant from  so  doing. 

Held,  by  the  Court  of  Appeal,  that  the  adoption  of  that 
name  for  a  new  newspaper  was  not  calculated  to  cause  it  to 
be  bought  in  mistake  for  the  old  one,  and  that  an  injunction 
which  had  been  granted  must,  therefore,  be  dissolved.2 

i  See   Thorley's  Cattle  Food  Co.  v.          2  See  Hogg  v.  Kirby,  10. 
Afassam,  671. 

308 


IN  RE  KIMBALL. 

551.  Rose  v.  Henley. 

April  27,  1877.     Matins,  V.  C.—  Cited  47  L.  J.  Ch.  577;    38  L.  T.  N.  S. 

410. 

THE  plaintiff  being  a  manufacturer  of  lime  juice,  who  sold 
his  article  in  bottles  moulded  specially  for  him  with  a  spray 
of  lime-tree  leaf  and  blossom  and  his  name  "  Rose  $•  Co." 
and  who  further  placed  on  his  bottles  a  label  containing  the 
same  spray  and  name,  the  defendant  systematically  collected 
the  plaintiff's  empty  bottles,  and  sold  them  refilled  with  lime 
juice  not  of  the  plaintiff's  preparation.  Injunction  granted 
to  restrain  the  defendant  from  infringing  the  plaintiff's  rights. 


552.  Wolmershausen  v.   O'Connor. 
May  3,  1877.     Bacon,  V.  C.  —  36  L.  T.  N.  S.  921. 

THE  defendant  (who  had  for  many  years  been  manager  of, 
and  for  a  shorter  time  partner  in,  the  firm  of  Foster  &  Co., 
tailors,  of  High  Street,  Oxford,  and  Mayfair,  and  had  latterly 
resided  at  Headington  Hill,  near  Oxford)  covenanted  with  the 
plaintiff,  the  principal  partner,  on  the  dissolution  of  the  part- 
nership, not  to  carry  on  the  business  of  a  tailor,  etc.,  within 
ten  miles  of  Oxford,  and  not  to  represent  himself  in  any  man- 
ner as  having  been  connected  in  trade  with  the  plaintiff  or 
his  firm,  as  partner,  manager,  or  servant,  but  shortly  after- 
wards set  up  a  tailor's  business  in  Cavendish  Square,  and 
issued  advertisements,  in  which  he  described  himself  as  "  late 
of  Headington  Hill,  Oxford,  and  formerly  of  Mayfair." 

On  motion  by  the  plaintiff  injunction  granted  to  restrain 
the  defendant  from  acting  in  breach  of  his  covenant,  and  from 
issuing  the  advertisements  in  question. 


553.  In  re  Kimball. 

May  3,1877.     U.  S.  Patent  Office :  Doolittle,  Act.  Comm.  —  11  U.  S.  Pat. 

Gaz.  1109. 

ON  an  application  for  the  registration  of  the  words  "  Van- 
ity Fair  "  as  a  trade-mark  on  cigarettes,  the  applicant  having 

309 


EX  PARTE  BARROWS. 

prepared  eight  different  arrangements  of  bis  manner  of  using 
the  words,  by  way  of  complying  with  the  requirement  of  the 
U.  S.  Statute  of  1870  for  the  manner  of  application  to  be  de- 
scribed : 

Held,  that  one  fac-simile  was  sufficient  to  illustrate  the 
method  of  use,  and  that  so  many  varieties  of  arrangement 
could  not  be  permitted  to  be  filed,  on  account  of  the  incum- 
brance  that  such  a  practice  would  occasion. 

554.  Swift  v.  Peters. 

May  8,  1877.     U.  S.  Patent  Office:  Doolittle,  Act.  Comm.  —  11  U.  S.  Pat. 

Gaz.  1110. 

INTERFERENCE  declared  between  Swift,  an  applicant  for 
the  registration  in  his  name  of  a  trade-mark  on  an  agricult- 
ural compost,  consisting  of  the  words  "  The  John  C.  Ragsdale 
Ammoniated  Dissolved  Bone"  and  Peters,  in  whose  name  the 
trade-mark  was  already  registered,  for  the  purpose  of  deter- 
mining to  whom  the  mark  in  question  belonged. 

Held,  (1.)  that  Swift  had  acquired  no  title  to  the  mark  by 
being  the  first  to  suggest  it,  the  title  to  a  trade-mark  depend- 
ing on  its  adoption  and  use,  and  not  on  its  invention ;  (2.) 
that  Swift  had  acquired  no  title  to  the  mark  by  user,  since 
whatever  use  of  the  mark  had  been  made  by  him  he  had  made 
in  the  capacity  of  agent  for  the  firm  of  Snowden  &  Peters ; 
(3.)  that  the  question  whether  Peters,  the  registered  pro- 
prietor of  the  mark,  was  or  was  not  entitled  to  the  exclusive 
use  of  it,  inasmuch  as  he  was  only  one  of  the  former  members 
of  the  dissolved  firm  of  Snowden  &  Peters,  was  a  question  for 
the  courts  and  not  for  the  patent  office  ;  (4.)  and,  therefore, 
that  priority  must  be  awarded  to  Peters,  Swift  never  having 
acquired  any  right  to  the  mark  by  adoption  or  user. 


555.  Ex  parte  Barrows  [T.  M.  A.  1875]. 

May  11,  1877.    Jessel,  M.  R.  —  W.  N.  1877,  p.  119  ;  L.  J.  Notes  of  Cos. 

1877,  p.  110. 

MESSRS.  BARROWS  having  long  used  as  their  trade-mark  on 

310 


KINNEY  V.  ALLEN. 

bar-iron  the  letters  "  B.  B.  jET."  surmounted  by  a  crown,  and 
having  registered  that  device  as  their  trade-mark  in  class  5 
in  the  first  schedule  to  the  rules,  Messrs.  Halton  &  Co.,  who 
had  used  the  letters  "  T.  H.  H"  surmounted  by  a  crown  as 
their  trade-mark  on  tin-plates,  turn-plates,  and  sheet-iron,  ap- 
plied for  the  registration  of  that  device  as  their  trade-mark  in 
class  5,  the  articles  on  which  they  had  used  the  mark  being 
included  with  bar-iron  and  other  goods  in  that  class. 

On  motion  by  Messrs.  Barrows  for  a  declaration  that  Messrs. 
Halton  &  Co.  were  not  entitled  to  have  the  mark  so  registered  : 
Held,  that  the  mark  in  question,  being  an  old  mark,  might  be 
registered  for  part  of  a  class  only,  and  that  leave  should  be 
given  for  the  mark  to  be  registered  in  class  5,  for  the  articles 
on  which  it  had  been  previously  used  only. 


556.  Hennessy  v.  Kennett. 
May  18,  1877.     Malins,  V.  C. 

THE  plaintiffs  were  brandy  merchants,  who  sold  two  classes 
of  brandy,  the  best  being  sold  in  cases  and  the  other  in  casks. 

Injunction  to  restrain  the  defendant  from  selling  brandy, 
not  the  plaintiffs'  "  case  "  brandy,  in  cases  branded  with  the 
latter's  name  and  trade-mark  refused,  on  the  ground  that  the 
only  occasion  on  which  the  defendant  was  proved  to  have 
done  so  was  when  an  agent  of  the  plaintiffs  bought  some  of 
the  plaintiffs'  "  cask  "  brandy  of  the  defendant,  and  the  de- 
fendant, at  the  agent's  request,  placed  the  "  cask  "  brandy  in 
one  of  the  plaintiffs'  cases.1 


557.  Kinney  v.  Allen. 

May,  1877.      U.  S.  C.  C.  Dt.  of  E.  Va. :  Hughes,  J.—  1  Hughes,  106;  4 
Am.  L.  T.  N.  S.  258. 

THE  plaintiff  being  a  manufacturer  of  cigarettes  who  placed 
upon  several  varieties  of  his  cigarettes  the  symbol  "  ^"  in  red,, 
and  had  registered  the  same  as  his  trade-mark  in  the  U.  S. 

1  See  Hennessy  v.  Cooper,  549. 

311 


KINNEY  V.  ALLEN. 

Patent  Office,  the  defendants  sold  other  cigarettes  under  la- 
bels, which  were  essentially  unlike  plaintiff's,  but  which  bore 
a  similar  symbol. 

Suit  for  an  injunction  to  restrain  the  defendants  from  using 
the  symbol : 

Held,  (1.)  that  as  the  plaintiff  had  always  used  the  symbol 
on  cigarettes  containing  tobacco  of  two  different  kinds,  half- 
and-half,  and  as  the  symbol  served  to  indicate  this,  though  it 
did  not  clearly  express  it,  an  injunction  restraining  the  use  of 
the  symbol  generally  could  not  be  granted ;  (2.)  that  a  lim- 
ited injunction  should  be  granted,  restraining  the  use  of  the 
symbol  in  the  identical  form,  size,  color,  and  style  in  which 
the  plaintiff  had  used  and  registered  it,  and  this,  notwith- 
standing that  the  defendants  had  used  it  on  a  label  which  was 
in  other  respects  quite  unlike  those  of  the  plaintiff. 

Per  Hughes,  J.  "  There  are  but  two  questions  arising  in  the 
present  case  as  to  this  numerical  character  £. 

"  (1.)  The  first  is,  —  its  use  by  the  complainant  being  in  a  critical 
sense  merely  arbitrary,  as  only  indicating  but  not  expressing  the  idea 
of  half-and-half,  but  not  absolutely  arbitrary  in  a  popular  sense, — 
whether  or  not  complainant  has  a  right  to  an  injunction  prohibiting 
the  use  by  others  of  the  character  in  any  form  on  wares  similar  to 
his  own.  On  the  general  principle'that  exclusive  privilege,  in  preju- 
dice of  general  right,  ought  not  to  be  upheld  in  cases  of  nicety  and 
doubt,  I  think  it  most  proper  not  to  grant  a  general  injunction. 

"  (2.)  The  next  question  is,  whether  the  complainant  has  a  right  to 
the  exclusive  use  of  this  trade-mark  in  the  form,  size,  color,  and  style, 
in  which  he  has  used  it  upon  his  wares  since  1873,  and  in  which  he 
registered  it  in  1875.  Upon  the  authority  of  cases  numerously  re- 
ported, and  upon  principles  well  established,  I  decide  that  he  has  such 
a  right,  and  will  so  decree ;  and  will  insert  in  the  decree  an  imprint 
of  the  character  \  in  the  form,  size,  color,  and  style,  in  which  an  ex- 
clusive use  upon  his  cigarettes  is  affirmed  to  the  complainant."  1 
1  See  Lawrence  Man.  Co.  v.  Lowell  Hosiery  Mills,  676. 

312 


SOCIETY  ANONYME,  ETC.,  V.  BAXTER. 

558.  In   re   The   Walkden   Aerated   Waters  Co.    [T.  M. 
A.  1875-6]. 

June  8,  1877.     Jessel,  M.  R.—l  Trade-Marks,  39. 

ON  motion  to  register  as  the  applicants'  trade-mark  for 
mineral  waters  a  newly  adopted  device  of  a  cock  standing  on 
a  circle,  registration  having  been  refused  by  the  registrar,  on 
the  ground  that  two  marks  of  a  similar  character  were  already 
on  the  register  in  respect  of  the  same  class  of  article  : 

Held,  that  the  consent  of  the  proprietor  of  one  of  the  two 
registered  marks  having  been  already  given,  the  mark  might 
be  registered  on  the  consent  of  the  proprietor  of  the  other 
registered  mark  being  obtained. 

"  The  Commissioners  of  Patents  have  considered  the  point  as  to 
how  often  any  new  device  or  emblem  may  be  registered  as  a  trade- 
mark for  goods  or  articles  in  the  same  class,  and  they  have  decided 
that,  for  the  sake  of  distinctiveness,  in  no  case  whatever  should  the 
number  of  times  exceed  three.  They  have  also  decided  that  if  a 
device  is  used  by  more  than  three  persons  it  cannot  be  registered  at 
all  under  the  act,  as  by  being  used  by  so  many  persons  it  wants  that 
element  of  distinctiveness  which  it  is  necessary  for  a  trade-mark  as 
defined  by  the  act  to  possess.  A  mark  that  is  common  to  several 
persons  cannot  be  said  to  be  a  distinctive  mark,  and,  therefore,  cannot 

be  registered." 

« 

559.  Societe  Anonyme  des  Mines  et  Fonderies  de  Zinc 
de  la  Vieille  Montagne  v.  Baxter. 

June  12,  1877.      U.  S.  C.   C.  S.  Dt.  of  N.  Y.:  Blatchford,  J.  —  14  U.  S. 

Pat.  Gaz.  679. 

THE  plaintiffs  being  manufacturers  of  dry  white  oxide  of 
zinc,  the  defendants  sold  white  oxide  of  zinc  ground  in  oil, 
under  the  same  trade-mark  as  that  used  by  the  plaintiffs. 

Injunction  to  restrain  the  defendants  from  infringing  the 
plaintiffs'  rights  refused,  on  the  ground  that  the  article  on 
which  the  defendants  used  the  mark  was  different  from  that 
on  which  it  was  used  by  the  plaintiffs. 

313 


MASSAM  V.  J.  W.  THORLEY'S  CATTLE  FOOD  CO. 


56O.  Massam  v.  J.  W.  Thorley's  Cattle  Food  Co. 

June  14,  1877.     Malins,  V.C.—  Q  Ch.  D.  574  ;  46  L.  J.  Ch.  707;  36  L.  T. 

N.  S.  848. 

JOSEPH  THORLEY  having  in  his  lifetime  been  a  manu- 
facturer of  a  compound  known  as  "  Thorley's  Food  for  Cat- 
tle," which  was  sold  in  packets  labelled  with  those  words  and 
with  Thorley's  signature ;  and  Thorley's  brother,  J.  W.  Thor- 
ley,  having  been  for  many  years  his  manager,  and  equally 
acquainted  with  the  secret  recipe  of  the  compound ;  J.  W. 
Thorley,  after  his  brother's  death,  founded  the  defendant 
company  for  the  manufacture  and  sale  of  the  same  article, 
which  was  sold  in  packets  labelled  with  the  words  "  Thorley's 
Food  for  Cattle,"  with  a  fac-simile  of  the  seal  of  the  com- 
pany, composed  of  its  name  in  a  circle  enclosing  the  heads  of 
various  animals,  and  the  company  also  issued  a  prospectus 
stating  its  connection  with  J.  W.  Thorley,  and  containing  the 
same  directions  for  use  as  those  issued  by  Joseph  Thorley. 

Motion  by  the  executors  of  Joseph  Thorley,  who  had  regis- 
tered the  signature  alone  as  the  trade-mark  of  their  business, 
for  an  injunction  to  restrain  the  defendants  from  represent- 
ing their  business  or  goods  to  be  those  of  the  plaintiffs, 
and  from  infringing  the  plaintiffs'  trade-mark,  refused,  on  the 
ground  (1.)  that  J.  W.  Thorley  was  entitled  to  use  his  own 
name,  either  alone  or  as  part  of  the  name  of  a  company,  or 
in  the  phrase  "  Thorley's  Cattle  Food"  in  the  manufacture  of 
an  unpatented  article,  with  the  recipe  of  which  he  was  ac- 
quainted, provided  that  he  acted  without  fraud ;  (2.)  that  the 
name  "  Thorley's  Cattle  Food  "  had  become  the  common  recog- 
nized designation  of  an  article  which  any  one  might  use  who 
could  produce  the  same  article,  although  he  might  not  repre- 
sent it  to  be  made  by  any  one  but  himself ;  *  (3.)  that  the 
article  being  the  same  as  the  plaintiffs',  the  same  directions 
for  use  were  correctly  used  ;  (4.)  that  the  trade-marks  of  the 

1  See  Singer  Man.  Co.  v.  Wilson,  477 ;  Thorley's  Cattle  Food  Co.  v.  Massam, 
671. 

314 


CONDY  V.  MITCHELL. 

parties,  consisting  respectively  of  the  signature  and  seal,  were 
entirely  different. 

561.  Condy  v.  Mitchell. 

June  15,  November  27,  1877.  Bacon,  V.  C.  —  B7  L.  T.  N.  S.  268.  Ct. 
ofApp. :  James,  Baggallay,  and  Thesiger,  L.JJ. — 37  L.  T.  N.  S.  766  ;  26 
W.  R.  269. 

SHORTLY  after  the  dissolution  of  the  firm  of  "  Bollmann 
Condy  $•  Co.,"  who  carried  on  business  as  manufacturers  of 
"  Condy' s  Fluid"  and  "  Condy' '«  Ozonized  Water  "  (those  ar- 
ticles having  been  invented  and  formerly  patented  by  H.  B. 
Condy),  under  articles  of  partnership,  by  which  the  partner- 
ship profits,  good-will,  and  property  became,  on  dissolution, 
divisible  in  equal  shares  between  the  partners,  H.  B.  Condy 
and  Mitchell,  Condy  set  up  a  separate  business  of  his  own  as 
"  H.  Bollmann  Condy"  and  Mitchell  founded  a  company  for 
the  same  purpose  under  the  name  of  "  The  Condy^s  Fluid 
Co." 

Action  by  Condy  for  an  injunction  to  restrain  Mitchell  from 
using  the  name  "  Condy  "  in  the  title  of  his  company  and  its 
manufactures. 

Injunction  refused,  on  the  ground,  (1.)  that  the  name 
"  Condy's  Fluid  "  had  come  to  be  the  name  of  an  article  of 
commerce  made  under  Condy's  expired  patent ;  (2.)  that  on 
the  formation  of  the  partnership  between  Condy  and  Mitchell, 
the  latter  acquired  an  equal  right  with  the  former  to  manu- 
facture the  article  and  use  the  name ;  (3.)  that  this  was  not 
affected  by  the  dissolution ;  (4.)  that  Mitchell  had  not  acted 
fraudulently  in  the  adoption  of  the  name  for  his  company  or 
otherwise,  nor  in  a  manner  calculated  to  cause  his  article  to 
be  mistaken  for  the  plaintiff's.1 

1  See   Singer  Man.  Co.  v.  Wilson,  477. 

315 


J.  W.  THORLEY'S  CATTLE  FOOD  CO.  V.  MASSAM. 

562.  Seabury  v.  Grosvenor. 

June  16,  1877.     U.  S.  C.  C.  S.  Dt.  of  N.  Y. :  Blatchford,  J.  —  53  How.  Pr. 
192;  14  U.  S.  Pat.  Gaz.  679. 

THE  plaintiffs  being  manufacturers  of  "  Benson's  Capcine 
Plasters"  which  name  they  had  registered  in  the  U.  S.  Patent 
Office  as  their  trade-mark,  the  defendant  sold  other  plasters 
under  the  name  of  "  Capsicin." 

Motion  for  a  preliminary  injunction  to  restrain  the  defend- 
ant from  infringing  the  plaintiffs'  rights  refused,  on  the 
ground  that  the  plaintiffs  were  disentitled  by  their  own  false 
representations  of  the  origin  and  value  of  their  plasters,  the 
word  "  Capcine  "  being  shown  to  be  quite  unknown,  and  not 
to  imply  any  such  qualities  as  were  described  by  the  plaintiffs, 
and  that  it  was  of  no  consequence  that  they  had  discontinued 
the  false  statements  before  filing  their  bill. 


563.  In  re  Cornwall.     (1.) 

June  29,  1877.    U.  S.  Patent  Office:  Doolittle,  Act.  Comm.—  12  U.  S.  Pat. 

Gaz.  138. 

A  DEVICE  consisting  of  a  star  and  crescent  admitted  to  reg- 
istration as  a  trade-mark  in  respect  of  soap,  notwithstanding 
that  the  figure  of  a  star  was  already  registered  as  a  trade-mark 
on  soap,  on  the  ground  that  the  use  of  the  proposed  mark  was 
not  calculated  to  deceive. 

564.  J.  W.  Thorley's  Cattle  Food  Co.  v.  Massam. 
June  30,  1877.     Malins,  V.  C.  —  6  Ch.  D.  582;  46  L.  J.  Ch.  713. 

THE  plaintiffs  in  Massam  v.  J.  W.  Thorley's  Cattle  Food  Co. 
began,  shortly  after  the  decision  of  that  case,  to  issue  adver- 
tisements of  their  cattle  food,  in  which  they  stated  that  they 
alone  were  possessed  of  the  secret  recipe  of  the  article. 

Motion  by  the  defendants  in  that  case  for  an  injunction  to 
restrain  the  issue  of  such  advertisements,  as  being  detrimental 
to  them,  refused,  on  the  authority  of  Prudential  Assurance 
Co.  v.  Knott ;  but 

316 


SELBY  V.  THE  ANCHOR  TUBE  CO. 

Held,  that,  notwithstanding  tnat  decision,  the  court  had  now 
power,  under  the  Judicature  Act,  1873,  s.  25,  sub-s.  8,  to  grant 
an  injunction  in  such  a  case.  The  plaintiffs'  costs  made  costs 
in  the  cause,  but  the  defendants  to  pay  their  own  costs  in  any 
event.1 


565.  In  re  Cornwall.     (2.) 

July  7,  1877.     U.  S.  Patent  Office:  Doolittle,  Act.  Comm.  —  12  U.  S.  Pat. 

Gaz.   312. 

THE  word  "  Dublin  "  admitted  to  registration  as  a  trade- 
mark on  soap,  on  the  ground  that  the  fact  that  the  soap  was 
not  manufactured  in  Ireland,  but  in  America,  showed  that  the 
word  was  not  used  in  its  ordinary  descriptive  geographical 
sense,  but  as  an  arbitrary  fancy  designation.2 


566.  Selby  v.  The  Anchor  Tube  Co. 
July  19, 1877.    Bacon,  V.  C.  —  W.  N.  1877,  p.  191. 

THE  plaintiff  and  defendants  having  been  partners  in  a  firm 
of  tube  manufacturers,  who  carried  on  business  at  Birmingham 
as  "  The  Imperial  Iron  Tube  Co.,"  and  at  Smethwick  as  "  The 
Birmingham  Patent  Iron  and  Brass  Tube  Co.,"  the  plaintiff 
became  entitled,  on  the  dissolution  of  the  partnership,  under 
the  articles  of  partnership,  to  the  Smethwick  premises,  and 
the  styles  and  good-will  of  the  firm,  and  the  defendants  be- 
came entitled  to  the  Birmingham  premises.  The  plaintiff 
then  began  to  carry  on  business  on  his  own  account  as  "  The 
Imperial  Iron  Tube  Co."  at  new  premises  in  Birmingham,  and 
also  at  the  Smethwick  premises,  and  the  defendants  carried 
on  business  at  the  old  Birmingham  premises,  and  issued  cir- 
culars headed  "  The  Anchor  Tube  Co.  (late~)  the  works  of  and 
partners  and  manager  in  the  Imperial  Tube  Co.,  Gras  /Street, 
Birmingham,"  and  also  employed  a  traveller  to  solicit  orders 
from  the  customers  of  the  old  firm. 

1  See  Thorley's  Cattle  Food   Co.  v.         2  See  In  re  Green,  473. 
Massam,  671. 

317 


MOET  V,  PICKERING. 

On  motion  by  the  plaintiff  injunction  granted  to  restrain 
the  defendants  from  representing  that  they  were  lately  the 
partners  in  the  plaintiff's  firm  of  the  Imperial  Tube  Company, 
or  that  they  had  succeeded  to  the  business  of  that  company, 
or  that  that  company  had  ceased  to  exist,  and  also  from  solic- 
iting or  executing  orders  on  any  such  representations. 


567.  Moet  v.  Pickering. 

July  23,  1877;  March  29,  1878.  Chanc.  Div. :  Fry,  J.  —  Q  Ch.  D.  770. 
Ct.  ofApp. :  James,  Cotton,  and  Thesiger, L.JJ.  —  8CLD.372;  47  L.  J. 
Ch.  527 ;  38  L.  T.  N.  S.  799 ;  26  W.  R.  637.  v 

THE  plaintiffs  being  French  wine-growers,  who  branded  on 
the  bottoms  of  the  corks  used  by  them  for  a  special  quality  of 
wine  the  letters  "  M.  $•  (7.,"  enclosed,  together  with  a  star,  in 
a  circle,  and  also  branded  the  word  '''-England  "  on  the  side  of 
each  cork,  the  defendant  Pickering  had  consigned  to  him  from 
abroad  a  quantity  of  wine  having  corks  similarly  branded  to 
the  plaintiffs',  the  wine  being  in  the  possession  of  certain 
wharfingers. 

Action  by  the  plaintiffs  for  an  injunction  to  restrain  the  de- 
fendant Pickering  from  infringing  the  plaintiffs'  trade-mark, 
and  from  dealing  with  the  wine  in  the  wharfingers'  possession, 
and  to  restrain  the  wharfingers,  who  were  also  made  defend- 
ants, from  parting  with  the  wine,  except  under  the  direction 
of  the  court,  and  for  an  order  on  Pickering  to  deliver  up  all 
spuriously  marked  corks,  and  for  an  account  and  damages 
from  him. 

Held,  by  Fry,  J. :  (1.)  that  the  plaintiffs  were  entitled  to  the 
injunctions,  order,  and  account;  (2.)  that  the  plaintiffs  were 
entitled  to  a  lien  upon  the  wine  for  their  costs  in  priority  to 
the  wharfingers'  lien  for  their  charges ;  (3.)  that,  the  wharfin- 
gers having  only  submitted  to  act  as  the  court  should  direct 
upon  having  their  charges  and  costs  paid  or  provided  for,  and 
it  having  been  argued  on  their  behalf  that,  even  if  the  plain- 
tiffs' right  were  established,  they  would  not  be  entitled  to 
touch  the  bottles  for  the  purpose  of  removing  the  spurious 

318 


IN  RE  SALAMON. 

corks  until  the  charges  were  paid,  the  wharfingers,  as  well  as 
Pickering,  must  be  made  liable  for  the  plaintiffs'  costs. 

Held,  by  the  Court  of  Appeal,  on  appeal  by  the  wharfin- 
gers :  (1.)  that  the  wharfingers  were  entitled  to  a  lien  on  the 
wine  for  their  charges,  in  priority  to  any  lien  of  the  plaintiffs 
for  their  costs,  if  such  plaintiffs'  lien  existed,  which  was 
doubted ;  (2.)  that  the  wharfingers  had  done  nothing  to  dis- 
entitle them  to  their  costs,  and  that  the  plaintiffs  must  pay 
such  costs  in  both  courts. 


568.  In  re  Mitchell  [T.  M.  A.  1875-6].     (1.) 

August  2,  1877.     Hall,  V.C.  —  7  Ch.  D.  36 ;  46  L.  J.  Ch.  876  ;  26  W.  R. 
326  ;  1  Trade-Marks,  55. 

MOTION  to  register  the  applicants  as  the  proprietors  of  a 
trade-mark  for  steel  pens,  consisting  of  the  letter  "A,"  re- 
fused, notwithstanding  that  the  applicants  and  their  predeces- 
sors in  business  had  used  that  letter  and  other  letters  of  the 
alphabet  as  their  trade-marks  for  many  years,  on  the  ground 
that  a  single  letter  was  not  within  the  definition  of  a  regis- 
trable  trade-mark  contained  in  the  T.  M.  A.  1875,  and  that 
that  definition  was  not  extended  by  the  Act  of  1876. 


569.  In  re  Salamon  [T.  M.  A.  1875]. 
August  3,  1877.     Jessel,  M.  R.  —  1  Trade-Marks,  135. 

AN  application  for  the  registration  of  certain  trade-marks 
on  sewing-machines,  consisting  respectively  of  the  words 
"  Howe  Sewing-Machine  Company"  a  monogram  inscribed 
with  the  same  words,  and  the  name  "Little  Howe"  having 
been  opposed  mainly  on  the  ground  that  the  exclusive  right 
to  use  the  name  "  Howe  "  as  a  trade-mark  belonged  to  the 
opponents,  and  that  the  applicant  had  never  used  the  name  as 
a  trade-mark,  nor  otherwise,  except  as  agent  for  them  or  their 
predecessors  in  business : 

On  motion  by  the  opponents  for  a  direction  as  to  how  the 
case  should  be  heard  :  Held,  that  the  question  being  one  of  title 

319 


IN  RE  GORDON. 

to  the  marks  and  their  user  by  the  applicant,  one  of  the  parties 
should  bring  an  action  to  try  the  right. 

u  I  always  direct  that  these  cases  should  be  mentioned  to  the  court, 
that  I  may  decide  the  proper  way  in  which  they  are  to  come  before 
the  court :  that  way  depends  on  the  circumstances  in  each  case.  If 
it  be  a  simple  question  of  law,  it  had  better  be  by  special  case ;  if  for 
directions  as  to  carrying  out  the  act,  by  summons  at  chambers  ;  if  of 
disputed  facts,  by  motion." 


570.  Denoe  v.  Mason.     (2.) 

August  8,  1877.     Malms,  V.  C. 

THE  defendant  F.  Mason,  in  Dence  v.  Mason  (1),  having 
been  enjoined  from  using  the  name  "  Brand  "  in  connection 
with  his  articles,  nevertheless  continued  to  sell  goods  bearing 
the  words  "  Frank  Mason  $  Co.'s  ('  Brand's  ')  Essence  of 
Beef."  On  motion  by  the  plaintiffs  defendant  committed 
for  contempt.  (On  December  18  he  was  discharged,  on  un- 
dertaking not  to  use  the  name  "  Brand  "  until  the  hearing  of 
the  action.) 


571.  In  re  Warburg  &  Co. 

August  25,  1877.     U.  S.  Patent  Office:  Doolittle,  Act.  Comm.  —  l3  U.  S. 

Pat.  Gaz.  44. 

APPLICATION  for  the  registration  of  the  words  "  Cachemire 
Milano  "  as  a  trade-mark  on  silks  (the  words  being  claimed 
as  the  essential  part  of  the  mark,  though  used  in  connec- 
tion with  the  name  "  R.  Same  $  Co."  and  a  picture  of  Milan 
Cathedral),  refused,  on  the  ground  that  the  words  were 
either  descriptive  of  the  quality  and  appearance  of  the  arti- 

cle, or  deceptive. 

» 

572.   In  re  Gordon. 

August  27,  1877.     U.  S.  Patent  Office:  Doolittle,  Act.  Comm.  —  12  U.  S. 

Pat.  Gaz.  517. 

ON  an  application  for  the  registration  of  a  strip  of  leaf  to- 
bacco, intended  to  be  wrapped  round  the  mouth-piece  of  a 

320 


AYER  V.  RUSHTON. 

cigarette,  and  to  vary  with  the  size  of  the  cigarette,  as  a 
trade-mark  on  cigarettes.  Held,  (1.)  that  the  mere  fact  that 
the  proposed  trade-mark  was  consumed  with  the  article  to 
which  it  was  attached  was  no  objection  to  it ;  (2.)  but  that 
the  proposed  trade-mark  was,  in  fact,  adapted  to  serve  a  me- 
chanical purpose  rather  than  to  distinguish  the  applicant's 
goods  from  others,  and  that,  therefore,  registration  must  be 
refused. 


573.    Prince    Metallic    Paint    Co.  v.   Carbon    Metallic 
Paint  Co. 

1877.     N.  Y.  Sup.  Ct.  —  Codd.  Dig.  209. 

THE  plaintiffs  manufacturing  paint,  on  which  they  placed 
the  words  "  Prince's  Metallic  Paint "  in  a  special  form,  the 
defendants,  being  brothers  of  the  name  of  Prince,  manufact- 
ured a  paint  which  they  called  "  Iron  Ore  Paint"  and  sold 
under  the  words  "  Prince  Bros.  Iron  Ore  Paint" 

Motion  by  the  plaintiffs  to  continue  an  injunction  which 
had  been  granted  to  restrain  the  defendants  from  infringing 
the  plaintiffs'  rights,  and  using  the  name  "  Prince"  refused, 
and  injunction  dissolved,  on  the  ground  that  the  defendants 
were  entitled  to  use  their  own  name  so  as  not  to  deceive,  and 
that  the  manner  in  which  the  defendants  had  used  it  was  not 
intended  or  calculated  to  deceive.1 


574.  Ayer  v.  Rushton. 
1877.    N.  Y.  C.  P.  —  Codd.  Dig.  229. 

THE  plaintiff  being  the  inventor  and  manufacturer  of  a 
medical  preparation  which  he  sold  under  the  name  of  "  Ayer's 
Cherry  Pectoral"  the  defendant  began  to  make  lozenges, 
which  he  called  "Cherry  Pectoral  Troches"  and  subsequently 
to  make  a  liquid  medicine  which  he  put  up  in  bottles  some- 
what similar  to  the  plaintiff's,  and  labelled  with  the  words, 
"  Cherry  Pectoral,  for  sale,  wholesale  and  retail,  by  Rushton 
1  See  Burgess  v.  Burgess,  117. 

21  321 


HELMBOLD  V.  HENRY  T.  HELMBOLD  MANUFACTURING  CO. 

^  Co.,  11  Barclay  Street,  New  York."  He  also  put  up  over 
his  premises  a  sign,  with  the  words  "  Depdt  of  the  Cherry  Pec- 
toral Company"  and  inside  a  notice,  "  Ayer's  Cherry  Pectoral, 
One  Dollar ;  Rushtorfs  Cherry  Pectoral,  Fifty  Cents.  Which 
will  you  have  ?  "  and  he  instructed  his  employees  to  explain 
the  differences  between  the  articles  to  customers. 

Injunction  which  had  been  granted  to  restrain  the  defend- 
ant from  using  the  words  "  Cherry  Pectoral,"  and  otherwise 
infringing  the  plaintiff's  rights,  dissolved  ;  and 

Held,  (1.)  that  the  defendant  had  only  traded  in  compe- 
tition with  the  plaintiff,  and  had  not  acted  in  a  manner  in- 
tended or  calculated  to  cause  his  article  to  be  mistaken  for 
the  plaintiff's  ;  (2.)  that  the  plaintiff  could  have  no  exclusive 
right  in  the  words  "  Cherry  Pectoral,"  since  the  first  word 
described  one  of  the  ingredients  in  the  compound,  the  wild 
cherry,  and  the  other  described  the  intended  application  of 
the  compound,  so  that  the  whole  term  was  common  property 
and  incapable  of  appropriation.1 


575.    Helmbold  v.   The  Henry  T.  Helmbold   Manufactur- 
ing Co. 

September,  1877.     N.  Y.  Sup.  Ct.:  Westbrook,  J.  —  53  How.  Pr.  453. 

HENRY  T.  HELMBOLD,  having  invented  an  article  which  he 
called  "  H.  T.  Helmbold's  Highly  Concentrated  Compound 
Fluid  Extract  of  Buchu,"  and  having  become  bankrupt,  the 
plaintiff,  his  brother,  claimed  to  have  manufactured  the  article 
for  H.  T.  Helmbold  and  his  assignee  in  bankruptcy,  and  to 
have  purchased  the  assignee's  rights  in  the  preparation.  The 
defendant  company  was  subsequently  formed  and  assisted 
by  H.  T.  Helmbold,  and  sold  the  same  compound  under  the 
same  name. 

Motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendant  company  from  so  doing  refused  ;  and 

Held,  (1.)  that  the  plaintiff  was  in  any  case  disentitled  by 
reason  of  his  own  false  representations  in  continuing  to  use 

i  See  Lee  v.  Haley,  325. 
322 


BOON  V.  MOSS. 

labels  guaranteeing  the  personal  inspection  and  supervision 
of  H.  T.  Helmbold  ;  (2.)  that  while  H.  X.  Helmbold  could 
himself  have  sold  the  right  to  use  his  name,  a  sale  by  the  as- 
signee in  bankruptcy  could  not  deprive  him  of  the  right  to  use 
it ;  (3.)  that  the  same  principle  applied  to  his  trade  secret, 
even  assuming  the  plaintiff  to  be  acquainted  with  it,  which  H. 
T.  Helmbold  denied  ;  (4.)  that  the  remainder  of  the  title  of 
the  preparation  (exclusive  of  the  name)  was  purely  descrip- 
tive and  incapable  of  appropriation. 

576.  Boon  v.  Moss. 

September  18,  1877.     N.  Y.  Ct.  ofApp.—  lQ  N.  Y.  (25  Sickels)  465. 

HALL,  the  proprietor  of  a  newspaper  called  The  Water- 
town  Weekly  Reunion,  entered  into  a  contract  with  Warren 
to  sell  to  him  (subject  to  certain  conditions,  including  certain 
specified  payments)  "  The  Watertown  Weekly  Reunion  print- 
ing establishment,  including  the  presses,  machinery,  type  of 
all  description,  newspaper  and  jobbing  material,  tools,  im- 
plements, etc.,  appertaining  to  the  said  printing  business." 
Warren  assigned  his  interest  under  the  agreement  to  Moss 
and  Boon,  and  Hall  assigned  his  to  Flower.  Boon  and  Moss 
failed  after  some  years  to  make  the  payments,  and  an  action 
was  commenced  between  them  for  dissolution  of  partnership, 
etc.,  in  which  a  receiver  was  appointed. 

An  action  was  subsequently  brought,  by  leave  of  the  court, 
by  Flower  against  the  receiver,  to  enforce  his  rights  under  the 
agreement. 

Held,  that  the  agreement  between  Hall  and  Warren  being 
for  a  conditional  sale,  the  title  did  not  vest  in  the  purchaser 
till  the  payments  were  made  and  conditions  fulfilled  ;  that 
the  good- will  of  the  business,  including  the  name  of  the  pa- 
per, subscription  list,  etc.,  was  included  in  the  sale ;  and  that 
Flower  was  entitled  to  recover  from  the  receiver  the  value  of 
the  good-will,  which  had  been  sold  by  him. 

"  The  good-will  of  a  newspaper  establishment  often  constitutes  its 

largest  value There  is  one  kind  of  good-will  which  has  been 

323 


IN  RE  CONSOLIDATED  FRUIT  JAR  COMPANY. 

said  to  be  only  a  probability  that  customers  will  resort  to  the  old 
place  ;  and  another,  far  more  valuable,  when  a  retiring  partner  agrees 
not  to  engage  in  the  same  business  in  competition  with  the  old  estab- 
lishment. The  good-will  of  a  permanent  newspaper  establishment  is 
generally  more  tangible  than  either."  * 


577.  In  re  Dole  Brothers. 

September  20,   1877.      U.  S.  Patent  Office:    Doolittle,  Act.  Comm.  —  12 
U.  S.  Pat.  Gaz.  939. 

AN  application  for  the  registration  of  the  words  "  Egg 
Macaroni  "  as  a  trade-mark  on  macaroni  having  been  refused, 
on  the  ground  that  the  words  were  either  descriptive  of  the 
article,  or,  if  no  eggs  were  used  in  its  manufacture,  deceptive ; 
on  a  renewed  application  based  on  the  proviso  in  the  U.  S. 
Act  of  1870  admitting  to  registration  lawful  trade-marks  right- 
fully in  use  on  July  8,  1870  : 

Held,  (1.)  that  long  before  the  adoption  of  the  words  by 
Pfeiffer,  the  applicants'  assignor,  in  connection  with  his  maca- 
roni, the  words  were  in  common  use ;  (2.)  that,  besides  this, 
Pfeiffer  had  always  used  the  words  in  connection  with  his  own 
name,  as  " Pfeiffer's  Egg  Macaroni"  and  generally  with  a 
landscape  picture  ;  (3.)  and  that,  for  both  these  reasons,  the 
words  "  Egg  Macaroni "  alone  were  not  a  lawful  trade-mark 
rightfully  in  use  on  July  8,  1870,  and  that  registration  must, 
therefore,  be  refused. 


578.  In  re  Consolidated  Fruit  Jar  Company. 

September  20,  1877.      U.  S.  Patent  Office:   Doolitlle,  Act.  Comm.  — 14 
U.  S.  Pat.  Gaz.  269. 

ON  an  application  by  the  assignees  of  certain  patents  for 
screw-neck  bottles  and  jars  granted  to  J.  L.  Mason,  for  the 
registration  as  their  trade-mark  of  the  name  " Mason"  which 
they  alleged  that  they  had  used  on  their  jars,  cards,  circulars, 
etc.,  for  many  years : 

Held,  (1.)  that  the  name,  being  the  name  merely  of  a  per- 

1  See  Hogg  v.  Kirby,  10. 

324 


COLMAN  V.  CHUMP. 

son,  unaccompanied  by  a  distinctive  mark,  could  only  be  reg- 
istered if  it  were  a  lawful  trade-mark  rightfully  in  use  on 
July  8,  1870 ;  (2.)  that  the  name  was  not  such  a  lawful 
trade-mark,  since  it  was  the  name  of  the  inventor  of  a  patent 
article  attached  to  that  article,  which  article  the  applicants 
had,  indeed,  the  sole  right  to  make,  and  therefore  to  designate 
by  its  name,  until  the  expiration  of  the  patents,  but  which 
article  would  then  cease  to  be  the  exclusive  property  of  the 
applicants,  whereupon  all  makers  of  it  would  be  entitled  to 
describe  it  by  its  appropriate  descriptive  name ;  (3.)  and  that 
the  application  must,  therefore,  be  refused. 


579.    Colman  v.  Crump. 

October  2,  1877.     N.  Y.  Super.  Ct.  —  40  N.  Y.  Super.  Ct.  (8  J.  &  5.)  548. 
N.   Y.  Ct.  ofApp.  —  lQ  N.  Y.  (25  Sickels)  573;  16  Alb.  L.  J.  352. 

THE  plaintiffs  being  English  manufacturers  of  mustard, 
which  they  sold  in  packages  labelled  with  the  device  of  a 
bull's  head,  the  defendant,  who  was  a  label-printer,  sold  labels 
bearing  bulls'  heads  generally  similar  to  that  used  by  plain- 
tiffs. 

Injunction  granted  to  restrain  the  defendant  from  infringing 
the  plaintiffs'  rights,  notwithstanding  that  there  were  points 
of  difference  between  the  two  bulls'  heads,  and  that  the  same 
device  had  long  been  used  by  other  manufacturers  on  other 
classes  of  goods. 

70  N.  Y.  578.  "It  is  not  necessary  that  the  symbol,  figure,  or 
device  used,  or  printed  and  sold  for  use,  should  be  a  fac-simik  or 
precise  copy  of  the  original  trade-mark,  or  so  close  an  imitation  that 
the  two  cannot  be  distinguished  except  by  an  expert,  or  upon  a  crit- 
ical examination  by  one  familiar  with  the  genuine  trade-mark.  If 
the  false  is  only  colorably  different  from  the  true,  if  the  resemblance 
is  such  as  to  deceive  a  purchaser  of  ordinary  caution,  or  if  it  is  calcu- 
lated to  deceive  the  careless  and  unwary,  and  thus  to  injure  the  sale  of 
the  goods  of  the  proprietor  of  the  trade-mark,  the  injured  party  is 
entitled  to  relief.  Neither  is  it  necessary  to  establish  a  guilty  knowl- 
edge or  fraudulent  intent  on  the  part  of  the  wrong-doer.  It  is  suffi- 

325 


MCLEAN  v.  FLEMING. 

cient  that  the  proprietary  right  of  the  party  and  its  actual  infringe- 
ment are  shown.  " 

P.  580.  "  The  fact  that  the  same  device  is  used  upon  other  articles 
of  merchandise  does  not  take  from  the  plaintiffs  their  right  to  its  ex- 
clusive use  on  this  one  article  of  their  manufacture."  * 


58O.  McLean  v.  Fleming. 

October,  1877.     U.  S.  Sup.  Ct.  —  9Q  U.  S.  Rep.  (6  Otto)   245;  13   U.  S. 

Pat.  Gaz.  918. 

THE  plaintiff  (respondent)  being  entitled,  under  the  will 
of  the  previous  proprietor,  to  a  druggist's  business  and  good- 
will, first  established  by  Dr.  C.  McLane  in  or  about  1834,  an 
important  part  of  the  business  consisting  of  the  manufacture 
and  sale  of  pills  known  as  "  Dr.  C.  McLane's  Liver  Pills" 
which  pills  were,  from  the  year  1847,  put  up  in  boxes  sealed 
on  the  top  with  a  red  seal  bearing  the  name  of  the  inventor, 
and  inclosed  in  a  certain  wrapper  containing,  among  other 
things,  the  name  of  the  pills,  the  defendant  (appellant),  Dr. 
J.  H.  McLean,  commenced  a  similar  business  in  1849,  and 
from  and  after  1851,  to  the  knowledge  of  the  plaintiff  or  his 
predecessors  in  business,  manufactured  and  sold  pills  under 
the  name  of  "  Dr.  McLean's  "  or  "  Dr.  J.  H.  McLean's  Uni- 
versal Pills"  and  placed  them  in  boxes  sealed  similarly  to  the 
plaintiff's,  and  enclosed  in  wrappers  of  similar  color  and  ap- 
pearance, bearing  the  name  applied  by  the  defendant  to  his 
pills,  but  in  1872  he  changed  his  wrappers,  and  adopted  new 
and  unobjectionable  ones,  on  complaint  made  by  the  plaintiff. 

Suit  by  the  plaintiff  for  an  injunction  to  restrain  the  de- 
fendant from  infringing  his  rights,  and  for  an  account. 

On  appeal  by  the  defendant  from  the  decision  of  the  U.  S. 
Circuit  Ct.  for  the  B.  Dt.  of  Missouri,  awarding  an  injunction 
with  a  decree  for  the  sum  of  $ 

Held :  — 

1.  That  in  trade-mark  cases  the  original  invention  or  pro- 
prietorship of  the  article  with  which  the  trade-mark  is  con- 
nected is  not  in  question,  but  that  the  court  proceeds  on  the 
1  See  Farina  v.  Silverlock,  130. 

326 


MCLEAN  v.  FLEMING. 

ground  that  the  plaintiff  has  a  valuable  interest  in  the  good- 
will of  his  business,  and  that  in  this  is  included  the  trade-mark 
by  which  his  goods  are  distinguished. 

2.  That  a  trade-mark  may  consist  of  a  name,  symbol,  figure, 
letter,  form,  or  device,  if  adopted  and  used  by  a  manufacturer 
or  merchant  as  distinctive  of  his  goods. 

3.  That  even  common  words  and  phrases,  not  invented  for 
the  purpose,  may  be  so  adopted  and  used,  if  not  previously 
applied  to  the  same  or  similar  articles. 

4.  That  a  name  when  so  adopted  and  used,  but  not  other- 
wise, may  be  a  good  trade-mark,  as  against  a  trader  or  dealer 
of  a  different  name. 

5.  But  that  there  is  no  exclusive  right  of  trade-mark  in  a 
name,  even  a  man's  own  name,  as  against  a  person  of  the  same 
name. 

6.  But  that  a  person  will  not  be  allowed  so  to  use  his  name 
as  to  represent  his  goods  to  be  those  of  another  person  of  the 
same  name. 

7.  That  a  person  may  have  a  good  trade -mark  for  goods 
which  he  exposes  for  sale,  though  not  of  his  manufacture,  and 
this,  although  the  name  of  the  actual  manufacturer  is  included 
in  the  device. 

8.  That,  to  constitute  an  infringement  of  trade-mark,  exact 
similitude  is  not  required,  but  that  an  infringement  has  been 
committed  when  ordinary  purchasers  buying  with  ordinary 
caution  are  likely  to  be  misled. 

9.  That  positive  proof  of  fraudulent  intention  is  not  required 
when  probability  of  deception  has  been  produced. 

10.  That  it  is  not  necessary  to  prove  infringement  of  a 
specific  trade-mark  if  the  defendant  has  acted  with  fraudulent 
intention,  and  has  refused  to  change  his  course  of  conduct. 

11.  That  an  injunction  will  not  in  general  be  refused  only 
on  the  ground  of  delay. 

12.  But  that,  although  the  injunction  may  be  granted,  yet, 
where  there  has  been  great  delay,  an  account  may  be  refused. 

13.  That,  in  the  case  in  question,  a  probability  of  deception 
had  been  established,  and  the  injunction  must  be  continued. 

327 


MCLEAN  v.  FLEMING. 


14.  And  that  the  plaintiff  must,  therefore,  have  his  costs  in 
the  court  below. 

15.  But  that,  on  account  of  the  plaintiff's  great  laches,  the 
account  granted  by  the  court  below  must  be  refused. 

16.  And  that,  that  being  so,  the  appellant  was  entitled  to 
his  costs  of  the  appeal.1 


1  The  points  of  chief  importance  de- 
cided by  this  case  were  :  (1.)  that  long- 
protracted  delay  on  the  part  of  the 
complainant  in  bringing  his  suit  will 
not  prevent  the  issuance  of  an  injunc- 
tion ;  but  (2.)  that  where  there  has  been 
such  delay  an  accounting  will  be  re- 
fused. 

The  first  of  these  points  had  been 
considered  in  numerous  cases,  and  while, 
perhaps,  the  current  of  authority  was 
strongly  in  favor  of  the  view  announced 
by  the  Supreme  Court,  there  were  not 
a  few  precedents  of  weight  which  made 
against  it. 

It  is  to  be  remarked  that  there  has 
been  a  broad  divergence  in  the  United 
States  from  the  rule  laid  down  in 
England ;  and  the  American  reader 
may  safely  dismiss  from  his  mind  what- 
ever has  been  said  elsewhere  than  in  the 
courts  of  his  own  country. 

The  point  is  one  which  was  neces- 
sarily brought  to  the  surface  at  an  early 
period  in  the  history  of  trade-mark 
litigation.  It  was  first  prominently 
mentioned  by  Judge  Story,  who  inti- 
mated that  the  defence  was  one  of  very 
doubtful  force.  Taylor  v.  Carpenter,  78. 
Judge  Woodbury  referred  to  it  in  his 
charge  to  a  jury  in  the  case  of  Taylor 
v.  Carpenter,  88,  decided  in  1846  ;  but, 
in  eft'ect,  only  went  so  far  as  to  decide 
that  the  acquiescence  must  be  at  least 
for  a  period  equal  to  the  time  fixed  by 
the  statute  of  limitations. 

In  1849  the  question  arose  in  Amos- 
Jceag  Man.  Co.  v.  Spear,  100,  and  was 
answered  by  Judge  Duer,  who  fore- 
shadowed what  may  be  taken  to  be  the 
final  disposition  which  was  made  by  the 
federal  court  of  last  resort  a  quarter  of 


a  century  later.  Judge  Duer  writes  as 
follows  :  — 

"  The  allegation  that  there  has  been 
such  an  acquiescence  for  some  years  on 
the  part  of  the  plaintiffs,  in  the  conduct 
of  the  defendants,  as  to  bar  the  former 
from  the  relief  they  now  seek,  I  cannot 
regard.  Not  only  is  the  allegation  suf- 
ficiently disproved,  but  I  am  satisfied 
that  the  doctrine  of  an  acquiescence 
operating  as  an  absolute  surrender  of 
an  exclusive  right  is  inapplicable  to  the 
case.  The  consent  of  a  manufacturer 
to  the  use  or  imitation  of  his  trade- 
mark by  another  may,  perhaps,  be  justly 
inferred  from  his  knowledge  and  si- 
lence ;  but  such  a  consent,  whether  ex- 
pressed or  implied,  when  purely  gratui- 
tous, may  certainly  be  withdrawn  ;  and 
when  implied,  it  lasts  no  longer  than 
the  silence  from  which  it  springs.  It 
is,  in  reality,  no  more  than  a  revocable 
license.  The  existence  of  the  fact  may 
be  a  proper  subject  of  inquiry  in  taking 
an  account  of  profits,  if  such  an  account 
shall  hereafter  be  decreed  ;  but  even  the 
admission  of  the  fact  would  furnish  no 
reason  for  refusing  an  injunction." 

Substantially  this  view  was  adopted 
in  Gillott  v.  Esterbrook,  269,  and  other 
cases,  but  was,  for  a  time,  unsettled  by 
a  number  of  decisions. 

In  Amoskeag  Man.Co.  v. Garner,  500, 
which  arose  in  1869,  and  which  was  a 
case  where  the  circumstances  were  prob- 
ably such  as  to  prevent  the  issuance 
of  an  injunction  whatever  the  conclu- 
sion in  respect  of  the  point  under  dis- 
cussion, Judge  Barnard  held  that  an 
acquiescence  of  eight  years  created  an 
estoppel  which  could  not  be  overcome. 
During  the  following  year,  Judge 


328 


CARVER  V.  BOWKER. 


581.  Carver  v.  Bowker. 
November  10, 1877.    Lancaster  Chanc. :  Little,  V.C.  —  l  Trade-Marks,  252. 

THE  plaintiffs,  carrying  on  business  at  Manchester  as  mer- 
chants and  shippers  of  cotton  goods,  on  which  they  used  cer- 
tain combinations  of  marks,  of  which  combinations  the  first 
consisted  of  a  heading  of  specially  colored  stripes,  certain 
other  stripes,  the  number  "  109,"  the  figure  of  a  coroneted 
eagle,  the  words  "Carver  Irmaos"  the  initials  "  R.  H."  and 
the  name  of  the  firm  of  Portuguese  importers,  and  the  other 
combinations  were  substantially  the  same,  but  with  varia- 

Blatchford,  holding  the  Circuit  Court 
of  the  United  States  for  the  Southern 
District  of  New  York,  decided  in  Dela- 
ware $•  Hudson  Canal  Co.  v.  Clark, 
327,  that  an  acquiescence  of  eleven 
years  was  equivalent  to  a  license  which 
estopped  the  complainants.  Judge 
Blatchford's  opinion,  was  followed  in 
a  number  of  instances ;  contemporane- 
ously with  which  adjudications  were 
made  that  tended  to  negative  his  view. 

Perhaps  the  most  marked  case  in 
this  group  was  that  of  Rogers  v.  Philp, 
352,  which  arose  in  the  Supreme  Court 
of  the  District  of  Columbia  in  1872. 
The  facts  showed  that  the  plaintiffs  had 
permitted  a  promiscuous  piracy  of  their 
mark  for  nearly  a  quarter  of  a  century, 
which  the  court  said  was  certainly  fatal 
to  their  suit  whatever  the  original  char- 
acter of  their  rights.  But,  although  on 
the  hearing  of  a  motion  for  a  prelimi- 
nary injunction  the  views  of  the  court 
had  been  carefully  formulated  at  con- 
siderable length,  upon  the  merits,  a  per- 
petual injunction  was  granted.  Browne 
on  Trade-Marks,  §  684. 

In  1876  there  was  a  pointed  return 
to  the  broader  and  better  doctrine  of 
Judge  Duer,  in  a  well-considered  opin- 
ion by  Judge  Barrett,  delivered  in  the 


case  of  Amoskeag  Man.  Co.  v.  Garner, 
in  connection  with  which  Judge  Bar- 
nard had  in  1869  arrived  at  a  different 


conclusion.  In  closing  his  opinion  Judge 
Barrett  said :  — 

"There  is,  therefore,  no  just  reason 
why  the  injunction,  at  least,  should  be 
refused,  upon  the  ground  of  laches.  It 
was  properly  refused,  pendente  lite. 
The  plaintiff's  case  was  not  so  clear  as 
to  warrant  the  interference  of  the  court 
before  the  hearing  upon  the  pleadings 
and  proofs.  As  to  the  correctness  of 
that  interlocutory  decision,  there  can 
scarcely  be  two  opinions  ;  that  is,  as  to 
the  result.  Much  of  the  reasoning  upon 
the  general  merits  of  the  case  was  un- 
necessary, and  it  certainly  is  not  bind- 
ing upon  the  Special  Term,  sitting  to  try 
the  issues,  especially  as  the  facts  fairly 
dedncible  from  the  testimony  now  be- 
fore the  court  differ  in  many  respects 
from  what  appeared  in  the  ex  parte  af- 
fidavits read  upon  the  motion. 

"  There  must,  therefore,  be  judgment 
for  the  plaintiff,  enjoining  the  defend- 
ants, but  without  damages  or  account 
of  profits,  and,  under  all  the  circum- 
stances of  the  case,  without  costs." 

Whatever  uncertainty  existed  in  1878 
was  set  at  rest  by  the  opinion  of  the 
court  in  the  principal  case. 

In  Cons.  Fruit  Jar.  Co.  v.  Thomas, 
668,  decided  by  Judge  Nixon,  holding 
the  Circuit  Court  of  the  United  States 
for  the  District  of  New  Jersey,  the  rule 
of  McLean  v.  Fleming,  was  applied  upon 
a  motion  for  a  preliminary  injunction. 

329 


IN  RE  PARKER. 

tions  in  the  number  and  color  of  the  stripes,  and  in  the  num- 
ber, for  "  109  "  being  substituted  "  406,"  "  409,"  "  413," 
etc.,  the  defendant,  who  carried  on  a  similar  business  at  Man- 
chester, used  on  his  goods  combinations  of  marks  resembling 
those  of  the  plaintiffs. 

Suit  by  the  plaintiffs  for  an  injunction  to  restrain  the  de- 
fendant from  infringing  their  rights. 

Held,  (1.)  that  as  to  the  component  parts  of  the  various 
combinations,  the  eagle  and  the  number  "  109  "  were  in  com- 
mon use  and  descriptive  of  quality  ;  (2.)  that,  although  the 
remaining  numbers  were  not  in  common  use,  they  could  not 
be  exclusively  appropriated ; 1  (3.)  that  the  remaining  parts 
of  the  combinations  were  distinctive  of  the  plaintiffs'  goods ; 
(4.)  that  an  injunction  must  be  granted  to  restrain  the  de- 
fendant from  the  use  of  the  combination  marks  as  a  whole, 
and  also  of  the  individual  component  parts,  with  the  excep- 
tion of  the  eagle  and  the  numbers,  on  any  goods  to  be  ex- 
ported for  sale  in  the  Oporto  market ;  (5.)  and  that  the 
plaintiffs  were  further  entitled  to  an  account  of  profits  or  to 
damages,  the  defendant  not  being  able  to  establish  a  system- 
atic infringement  amounting  to  public  user. 


582.   In  re  Parker. 

November  13,  1877.     U.  S.  Patent  Office:  Doolittle,  Asst.  Comm.  —  13  U. 
S.'Pat.  Gaz.  323. 

ON  an  application  for  the  registration  as  a  trade-mark  of 
the  figure  of  a  boy,  together  with  certain  words  surrounded 
by  a  border  of  lines,  and  printed  in  minute  squares  upon  a 
card,  for  the  purpose  of  serving  as  a  pattern  for  sampler- 
work  to  be  wrought  in  the  squares,  and  then  the  whole  to  be 
attached  to  a  piece  of  abrasive  paper  and  used  in  firing  fric- 
tion matches: 

Held,  that  the  combination  in  question  was  not  a  trade- 
mark but  a  design,  inasmuch  as  it  was  not  intended  to  be 
attached  to  an  article  as  a  distinguishing  feature,  but  was  it- 
1  See  Kinney  v.  Basch,  542. 

330 


RE  BLOCK  &  CO. 


self  the  article,  and,  therefore,  that  application  should  have 
been  made  to  patent  it  as  a  design,  and  that  registration  as  a 
trade-mark  must  be  refused. 


583.  Twentsche  Stoom  Bleekery  Goor  v.  Ellinger  &  Co. 
November  15,1877.    Matins,  V.  C.  —  26  W.  R.  70. 

ON  motion  by  the  plaintiffs,  a  Dutch  bleaching  company, 
injunction  granted  to  restrain  the  defendant,  a  commission 
agent,  from  infringing  the  plaintiffs'  trade-marks ;  and 

Held,  (1.)  that  the  fact  that  the  plaintiffs'  marks  were  not 
registered,  and  that  the  writ  in  the  action  was  issued  on  a 
date  (July  27,  1877)  subsequent  to  the  date  (Jan.  1,  1877) 
fixed  by  the  T.  M.  A.  1876,  as  the  date  before  which  a  trade- 
mark must  have  been  registered  to  entitle  its  proprietor  to 
sue  for  an  infringement,  and  before  the  royal  assent  (Aug. 
15,  1877)  had  been  given  to  the  T.  M.  A.  1877,  by  which  the 
time  was  extended  to  Jan.  1,  1878,  did  not  disentitle  the 
plaintiffs  to  their  remedy  ;  (2.)  that  the  assertion  of  the  de- 
fendant that  the  goods  had  been  marked,  packed,  and  ex- 
ported without  his  knowledge  was  no  defence  ;  (3.)  that  the 
defendant  must  pay  all  the  costs,  though  it  might  have  been 
otherwise  if  he  had  submitted  at  once,  having  regard  to  the 
fact  that  no  proper  notice  had  been  given  him  by  the  plain- 
tiffs before  the  issue  of  their  writ.1 


584.  In  re  Block  &  Co. 

November  22,  1877.     U.  S.  Patent  Office :  Spear,  Comm.  —  l±  U.  S.Pat. 

Gaz.  235. 

AN  application  for  the  registration  of  a  trade-mark  having 
been  refused,  on  the  ground  that  the  proposed  mark  did  not 
constitute  a  registrable  trade-mark,  an  application  was  made 
for  the  registration  of  an  essentially  different  mark,  which 
was  granted,  but  an  application  for  the  second  application  to 
1  See  Millington  v.  Fox,  63. 

331 


ROBINSON  V.  FINLAY. 

be  considered  and  treated  as  an  amendment  of  the  original 
application  was  refused. 

On  an  application  for  the  return  of  the  fee  paid  upon 
the  filing  of  the  original  application  as  having  been  paid  by 
mistake : 

Held,  that  a  fee  paid  upon  an  application  could  only  be  re- 
turned when  it  had  been  paid  by  actual  mistake,  such  as 
when  it  was  a  payment  in  excess  of  the  proper  amount,  or 
was  not  required  by  law,  and  that  the  application  must  be 
refused. 


585.   Robinson  v.  Finlay. 
Ward  v.  Robinson. 

November  24,  1877;  May  14,  1878.  Bacon,  V.  C.  —  9  Ch.  D.  489.  Ct. 
ofApp.:  James,  Baggallay,  and  Bramwell,  L.  JJ. —  9  Ch.  D.  487;  39 
L.  T.  N.  S.  398;  27  W.  R.  294. 

A  CERTAIN  group  of  five  trade-marks,  consisting  respec- 
tively of  Robinson's  name,  his  coat  of  arms,  his  crest,  a  figure 
of  an  elephant,  and  a  varying  number  called  a  range  number, 
together  with  a  heading  of  colored  threads,  having  been  ex- 
clusively used  on  cotton  goods,  which,  in  the  habitual  course 
of  business,  were  manufactured  by  Ward,  exported  by  Robin- 
son, and  consigned  to  Galbraith,  who  sold  them,  after  bleach- 
ing, at  Rangoon  (three  of  such  marks  having  been  previously 
used  by  Robinson,  one,  in  a  slightly  different  form,  by  Rob- 
inson and  Galbraith,  while  the  other  one  was  new)  ;  after  the 
interruption  of  the  connection,  Robinson  continued  to  use  the 
same  group  of  marks,  and  Ward  began  to  export  goods  bear- 
ing substantially  the  same  marks,  through  Finlay. 

Cross  actions  commenced  respectively  by  Robinson  against 
Finlay,  and  by  Ward  against  Robinson,  for  an  injunction  to 
restrain  the  use  of  the  group  of  marks. 

Held,  by  the  V.  C.  :  That  the  marks  were  indicative  of 
goods  selected  by  Robinson,  and  exported  and  sold  on  his 
responsibility,  and  that  an  injunction  must  be  granted  in  the 
first  action. 

332 


IN  RE  ORR-EWING  &  CO. 

Held,  by  the  Ct.  of  App. :  That,  inasmuch  as  the  group  of 
marks  had  never  been  used  except  on  goods  which  had  passed 
through  the  hands  of  all  the  three  parties  (although  separately 
some  of  them  had  been  so  used),  the  group  of  marks,  as  a 
whole,  was  indicative  of  goods  which  had  passed  through  that 
particular  course  of  trade,  that  neither  of  the  parties  was  enti- 
tled to  the  exclusive  use  of  the  group,  and  that  both  actions 
must,  therefore,  be  dismissed  without  costs. 

Per  Baggallay,  L.  J.  "  It  being  clear  upon  the  evidence  that  the 
designs  were  designs  in  which  three  persons  were  interested  for  the 
purpose  of  carrying  on  a  business  or  adventure  in  which  all  three 
were  interested,  it  follows  that,  upon  the  termination  of  that  adven- 
ture, none  of  the  three  could  claim  any  title  against  the  other."  1 

586.   In  re  Orr-Ewing  &  Co.  [T.  M.  A.  1875-6]. 

November  15,  1877 ;  June  7,  1878.  Hall,  V.  C.  —  8  Ch.  D.  798  ;  47  L.  J. 
Ch.  180 ;  38  L.  T.  N.  S.  313 ;  26  W.  R.  259 ;  1  Trade-Marks,  211.  Ct. 
of  App. :  James,  Baggallay,  and  Bramwell,  L.  JJ.  —  8  Ch.  D.  794  ;  47 
L.  J.  Ch.  807;  38  L.  T.  N.  S.  695 ;  26  W.  R.  777. 

AN  application  having  been  made  for  the  registration  of 
certain  trade-marks  in  respect  of  cotton  goods,  consisting  of 
triangular  green  labels  or  tickets  with  a  device  in  gold,  being 
a  curtain  bearing  an  inscription  and  held  up  by  supporters, 
the  Committee  of  Experts  at  Manchester  placed  such  marks 
in  the  second  class  as  being  not  entitled  to  registration,  on  the 
ground  that  the  shape  and  style  and  principal  component  parts 
of  the  marks  were  in  common  use  in  the  trade,  though  the 
exact  combinations  were  only  used  by  the  applicants. 

On  motion  by  the  applicants  for  a  declaration  that  the 
marks  were  true  trade-marks  within  the  Trade-Marks  Regis- 
tration Acts,  and  for  a  direction  to  the  registrar  to  proceed 
with  the  registration  : 

Held,  by  the  V.  C. :  That  each  of  the  tickets,  looked  at  as  a 
whole,  was  distinguishable  from  the  other  tickets  in  use,  and 
that  the  motion  must  be  granted. 

1  It  is  here  ruled  that  a  person  may  have  a  trade-mark  upon  goods  selected 
by  him.  See  Godillot  v.  Hazard,  461. 

333 


METZLER  V.  WOOD. 

Held,  by  the  Ct.  of  A  pp.  :  That  the  Committee  of  Experts 
were  constituted  by  the  Trade-Marks  Registration  Acts  and 
Rules  a  tribunal  to  decide  as  to  the  validity  or  invalidity  of 
cotton  marks ;  that  their  decision  should  not  be  reversed,  ex- 
cept on  proof  that  they  had  proceeded  on  some  wrong  prin- 
ciple, or  in  some  improper  manner  ;  that,  in  the  case  in  ques- 
tion, this  was  not  established  ;  and  that  the  motion  should 
have  been  refused. 


587.  Metzler  v.  Wood. 

December  17,  1877  ;  April  1,  1878.  Malms,  V.  C.  —  8  Ch.  D.  608.  Ct. 
of  App. :  James,  Cotton,  and  Thesiger,  L.  JJ.  —  8  Ch.  D.  606;  47  L.  J. 
Ch.  625;  38  L.  T.  N.  S  541;  26  W.  R.  577. 

THE  plaintiffs  being  the  proprietors  of  "  Hemy1 8  Royal 
Modern  Tutor  for  the  Pianoforte"  published  in  a  yellow 
cover  bearing  that  title,  the  defendant  employed  Hemy  to 
prepare  a  new  edition  of  an  obsolete  work  called  "  Jousses 
Royal  Standard  Pianoforte  Tutor"  and  published  it  in  a 
gray  cover  with  the  title  "  Hemy1 8  New  and  Revised  Edition 
of  Jousse's  Royal  Standard  Pianoforte  Tutor"  the  name 
"  Hemy's  "  being  in  large  and  conspicuous  letters. 

Injunction  granted  to  restrain  the  defendant  from  infring- 
ing the  plaintiffs'  rights ;  and 

Held,  by  the  V.  C. :  (1.)  that  the  plaintiffs  were  not  disen- 
titled by  reason  of  a  representation  that  this  was  the  600th 
edition  of  the  plaintiffs'  work,  it  being  proved  to  be  a  trade 
custom  to  style  every  issue  of  250  copies  a  new  edition,  nor  by 
a  statement  that  their  work  was  specially  revised  by  Hemy, 
the  words  being  properly  interpreted  to  mean  that  it  was  a 
specially  revised  edition,  but  not  to  distinguish  it  from  all 
previous  ones  in  that  respect  ;  (2.)  that  the  plaintiffs  hav- 
ing set  up  claims  as  to  copyright  and  gone  into  the  inter- 
nal structure  of  the  defendant's  work,  but  failed  on  that 
point,  the  defendant  must  pay  one  half,  instead  of  the  whole, 
of  the  plaintiffs'  taxed  costs.1 

1  See  Pidding  v.  How,  60. 

334 


BAIN  v.  MUNRO. 

588.  Bain  v.  Munro. 

January  10,  1878.     Ct.  of  Session.  —  Ct.  of  Sess.  Cos.  ±th  Ser.  V.  416;  15 
Scot.  L.  Rep.  260. 

ACTION  to  recover  from  the  widow  and  executrix  of  a  med- 
ical man  a  sum  of  money  guaranteed  by  the  defendant's  hus- 
band to  the  plaintiff. 

Held,  by  the  Lord  Ordinary  (Lord  Curriehill)  and  the 
court,  that  a  sum  of  money  paid  to  the  defendant  by  way  of 
purchase  money  for  the  good-will  of  her  husband's  medical 
practice,  with  a  recommendation  from  herself,  belonged  to  the 
defendant,  and  not  to  the  estate  of  her  deceased  husband,  on 
the  ground  that  the  good-will  of  a  medical  practice  was  per- 
sonal and  not  transmissible,  and  that  the  money  was,  in  fact, 
paid  for  the  defendant's  recommendation. 

Per  Lord  Curriehill.  "  There  is  truly  no  such  thing  as  good-will 
in  the  case  of  a  business  carried  on  by  a  professional  man,  such  as  a 
physician,  surgeon,  or  law  agent,  whose  success  depends  entirely  upon 
his  own  personal  skill.  It  is  quite  different  in  the  case  of  a  trade  or 
manufacture,  where  the  employer  may  have  the  possession  of  patents 
or  trade  secrets,  or  may,  by  long  exercise  of  his  trade  or  manufacture 
in  some  particular  locality,  have  drawn  together  skilled  artisans  and 
attracted  the  custom  of  a  district  to  his  establishment.  In  such  a  case 
it  is  not  the  individual  skill  of  the  employer,  but  the  reputation  which  • 
his  establishment  has  acquired,  which  creates  that  incorporeal,  but 
frequently  valuable,  estate  known  as  the  'good-will'  of  a  trade.  But 
there  is  no  such  thing  in  the  case  of  a  professional  man.  His  busi- 
ness dies  with  him,  and  the  man  who  comes  after  him  in  the  district 
must  depend  for  success  upon  his  own  exertions.  It  is  quite  true  that 
such  businesses  are  occasionally  sold  ;  but  what  is  thus  sold  in  the  case 
of  a  living  professional  man  retiring  from  business  is  truly  the  per- 
sonal recommendation  which  the  seller  gives  to  his  former  clients  or 
patients  in  favor  of  his  successor,  coupled  with  the  predecessor's  own 
retirement  from  business.  But  where  the  physician  or  law  agent  is 
dead,  nothing  of  the  kind  can  take  place.  He  has  been  removed  by 
death  from  all  possibility  of  competing  with  the  new  doctor  or  the 
new  solicitor,  and  his  voice  being  forever  silenced,  he  cannot  give 
any  recommendation  to  his  clients  or  patients.  But  if  the  family  of 

335 


IN  RE  POWELL;   IN  RE  PRATT. 

the  deceased  professional  man  offer  to  recommend  a  successor  to  the 
clients  or  patients  of  the  deceased  on  receiving  a  money  equivalent, 
what  is  paid  for  is  merely  the  recommendation  of  the  living  members 
of  the  family  of  the  deceased." 

Per  the  Lord  Justice  Clerk.  "  It  is  quite  clear  that  a  distinction 
has  always  been  drawn  between  the  good-will  of  a  trade,  where  the 
individual  skill  of  the  trader  has  often  less  to  do  with  the  success  of 
the  undertaking  than  other  circumstances  connected  with  it,  and  a  pro- 
fession which  is  only  carried  on  with  success  by  means  of  the  brain 
and  other  personal  qualifications  of  the  person  conducting  it.  The 
distinction  which  has  been  drawn  between  these  is  thorough,  and  so 
the  law  has  been  laid  down  in  these  cases  which  have  been  quoted  to 
us.  The  benefit  derived  from  the  exercise  of  a  profession  seems  to 
me  to  be  so  personal  to  the  individual  exercising  it  that  nothing  can 
be  said  to  transmit  to  the  effect  of  being  assets  in  the  hands  of  an  ad- 
ministrator." 

Per  Lord  Ormidale.  "  I  think  it  is  impossible  to  hold  that  a  med- 
ical man's  practice  can  transmit,  and  that  the  value  of  the  good-will 
of  such  a  practice  can  be  considered  an  asset  in  the  deceased's  execu- 
tory." 

Per  Lord  Gifford.  "  I  think  it  is  quite  clear  that  there  may  be  the 
good-will  of  the  practice  of  a  professional  man  as  well  as  of  a  trade. 
You  have  instances  of  this  in  the  case  of  medical  men  every  day.  It 
is  said  that  this  is  only  the  case  when  both  parties  are  living,  the 
retiring  doctor  and  his  successor.  But  I  cannot  assent  to  this.  I 
see  nothing  to  prevent  a  medical  man  bequeathing  his  practice  to  a 
friend." 


589.  In  re  Powell;  In  re  Pratt,   [T.  M.  A.  1875]. 
January  12,  1878.     Jessel,  M.  R.—  l  Trade-Marks,  237. 

A  REPRESENTATION  of  a  willow-pattern  plate  having  been 
used  by  the  former  of  the  above  parties  since  1864  as  his 
trade-mark  on  his  "  GroodaWs  Yorkshire  Relish"  and  by  the 
latter  of  the  parties  since  1868  on  his  "  Club  Sauce"  and 
each  of  the  parties  having  applied  for  the  registration  of  the 
device  as  his  trade-mark,  and  opposed  the  application  of  the 
other : 

336 


BLACKWELL  v.  DIBRELL. 

On  two  summonses  taken  out  by  the  parties  by  direction  of 
the  judge  and  adjourned  into  court: 

Held,  that,  inasmuch  as  each  of  the  parties  had  used  the 
mark  independently  and  bond  fide  for  several  years,  the  mark 
should  be  registered  in  both  names. 


59O.  Blackwell  v.  Dibrell. 

January  14,  1878.     U.   S.   C.  C.  E.  Dt.  of  Va. :  Hughes,  J.  —  14  U.  S. 

Pat.  Gaz.  633. 

THE  plaintiffs  being  manufacturers  of  tobacco  at  Durham, 
in  North  Carolina,  who  labelled  their  tobacco  with  the  figure 
of  a  Durham  ox  and  the  words  "Durham  Smoking  Tobacco  " 
(their  title  being  derived  as  stated  in  "  Blackwell  v.  Armis- 
tead  "),  the  defendants  manufactured  tobacco  at  Richmond, 
Virginia,  and  labelled  it  in  the  same  way,  except  that  the 
head  and  neck  of  the  bull  were  substituted  for  the  entire 
figure. 

Suit  for  an  injunction  to  restrain  the  defendants  from  in- 
fringing the  plaintiffs'  rights. 

Held,  (1.)  that  even  if  W.  A.  Wright  (through  whom  the 
defendants  claimed  to  be  entitled  to  use  the  label)  had,  as  he 
alleged,  adopted  the  label  used  by  the  defendants  before 
Green,  through  whom  the  plaintiffs  claimed,  had  begun  to  use 
the  label  used  by  them,  yet  he  had  lost  whatever  rights  he  had 
in  the  mark  by  abandonment  and  disuse  for  eight  or  nine  years 
from  1861 ; l  (2.)  that  during  that  period  of  disuse  the  name 
had  acquired  a  local  signification,  as  indicating  tobacco  grown 
at  the  town  of  Durham ;  (3.)  that  whether  the  plaintiffs  had  or 
had  not  an  exclusive  right  in  the  mark  as  against  other  manu- 
facturers at  Durham,  they  were  at  all  events  entitled  to  a  rem- 
edy against  the  defendants,  who  did  not  carry  on  business  at 
Durham,  and  that  an  injunction  must  be  granted,  with  an 
account. 

"  That  the  right  to  use  a  trade-mark  may  be  lost  by  abandonment 
or  disuse  is  too  clear  to  need  argument  or  the  support  of  authority." 

1  See  Blackwell  v.  Wright,  466. 
22  337 


SIEGERT  V.  FINDLATER. 

591.  Siegert  v.  Findlater. 

January  15,  1878.    Chanc.  Div. :  Fry,  J.—  7  Ch.  D.  801 ;  47  L.  J.  Ch.  233; 
38  L.  T.  N.  S.  849;  26  W.  R.  459. 

DR.  SIEGERT  having  in  1830  commenced  manufacturing  at 
Angostura  (since  1846  renamed  Ciudad  Bolivar),  in  Vene- 
zuela, a  fluid  which  he  termed  "Aromatic  Bitters,"  and  sold  in 
peculiarly  shaped  bottles,  enclosed  in  wrappers  printed  with 
descriptions  of  the  virtues  and  uses  of  the  preparation,  in  par- 
allel columns  of  Spanish,  English,  and  German,  and  under- 
neath in  French,  the  heading  of  the  centre  column  being 
"  Aromatic  Bitters,  prepared  by  Dr.  Siegert  at  Angostura  (now 
Ciudad  Bolivar)"  and  the  fluid  having  generally  acquired 
the  name  of  "Angostura  Bitters"  though  not  so  termed  by 
Dr.  Siegert ;  in  1870  Dr.  Meinhard  began  at  Ciudad  Bolivar 
to  make  and  sell  another  preparation  in  bottles  similarly 
shaped  to  Dr.  Siegert's,  with  similar  descriptions  on  the  wrap- 
pers in  the  same  languages  similarly  arranged,  the  heading  of 
the  centre  column  being  "  Aromatic  Bitters,  prepared  by  Teo- 
doro  Meinhard,  Ciudad  Bolivar,  formerly  Angostura,"  which 
inscriptions  he  somewhat  altered  in  1874,  after  the  suit  of 
Siegert  v.  Ehlers,  in  Trinidad,  so  that  the  new  heading  was 
"  Angostura  Bitters,  prepared  by  Teodoro  Meinhard,  Ciudad 
Bolivar,  formerly  Angostura,"  and  across  the  three  columns 
the  words  "  Angostura  Bitters  "  were  printed  in  red  letters. 

Action  by  the  successors  in  business  of  Dr.  Siegert,  who  had 
in  1875  removed  their  business  to  Port  of  Spain,  in  Trinidad, 
and  thereupon  somewhat  varied  their  wrappers,  adopting  the 
term  "  Angostura  Bitters  "  for  the  first  time,  so  that  the  head- 
ing now  ran  "  Aromatic  Bitters,  or  Angostura  Bitters,  pre- 
pared by  Dr.  Siegert,  at  Angostura  (now  at  Port  of  Spain, 
Trinidad),"  and  who,  after  the  commencement  of  the  action, 
again  changed  their  wrappers,  for  an  injunction  to  restrain  an 
infringement  by  the  English  agents  of  Dr.  Meinhard. 

Held,  (1.)  that  Meinhard  had  acted  in  a  manner  intended 
and  calculated  to  deceive,  and  which  had  deceived  ;  (2.)  but 
that  the  plaintiff  was  not  entitled  to  the  exclusive  use  of  the 

338 


IN  RE  FARINA. 

term  "Angostura  Bitters"  since  that  had  become  the  name  of 
an  unpatented  article  which  any  one  who  could  discover  the 
secret  recipe  might  make  and  call  by  its  name,  although  it  had 
hitherto  been  made  by  only  one  firm,  because  they  alone  knew 
the  secret ; l  (3.)  that  a  defence,  based  on  the  plaintiffs  being 
disentitled  by  reason  of  misrepresentation  in  their  new  wrap- 
pers, failed,  there  being,  in  the  first  place,  no  substantial  mis- 
representation, and  the  label  having,  in  the  second  place,  not 
been  adopted  till  after  the  commencement  of  the  action ;  (4.) 
and,  therefore,  that  an  injunction  must  be  granted  to  restrain 
the  defendant  from  using  the  word  "  Angostura"  or  the  words 
"  Angostura  Bitters"  in  such  a  way  as  to  be  calculated  to  de- 
ceive, but  not  so  as  to  prevent  their  being  applied  to  an  article 
identical  with  the  plaintiffs',  by  whomsoever  made. 

"  It  is  to  be  observed  that  the  person  who  produces  a  new  article, 
and  is  the  sole  maker  of  it,  has  the  greatest  difficulty  (if  it  is  not  an 
impossibility)  in  claiming  the  name  of  that  article  as  his  own,  because, 
until  somebody  else  produces  the  same  article,  there  is  nothing  to 
distinguish  it  from.  No  distinction  can  arise  from  using  the  name  of 
the  class  so  long  as  the  class  consists  of  only  one  species,  for  then  the 
name  of  the  species  and  the  name  of  the  class  will  be  the  same." 


592.  In  re  Farina  [T.  M.  A.  1875].     (1.) 
January  17,  1878.     Hall,  V.  C.  — 26  W.  R.  261. 

J.  M.  FAKEN  A  and  his  predecessors  in  business  having  long 
manufactured  Eau-de-Cologne  at  Cologne,  which  was  sold  in 
bottles  bearing  a  label  on  which  was  printed  Farina's  signa- 
ture, with  a  peculiar  nourish,  and  with  a  medallion  of  his 
family  arms  in  the  upper  left-hand  corner,  and  he  having  reg- 
istered this  label  as  his  trade-mark  in  Germany  and  England, 
another  manufacturer  of  Eau-de-Cologne,  who  used  a  label 
on  his  bottles  very  similar  to  Farina's,  but  having  a  different 
medallion  in  the  corner,  obtained  registration  in  Germany,  and 
applied  for  registration  in  England,  of  a  medallion  identical 
l  See  Siegert  v.  Ehlers,  432. 

339 


IN  BE  HYDE  &  CO. 

with  that  contained  in  the  plaintiff's  label,  asserting  that  it 
was  also  his  own  family  arras. 

Motion  by  the  registered  proprietor  for  a  declaration  that 
the  applicant  was  not  entitled  to  registration,  and  to  restrain 
him  from  taking  further  proceedings  with  a  view  to  registra- 
tion, refused,  on  the  ground  that  the  question  whether  regis- 
tration should  be  allowed  must  depend  on  whether  an  injunc- 
tion would  be  granted  in  an  action  independent  of  the  regis- 
tration acts,  and  that  in  the  case  in  question  the,  medallion, 
used  alone,  was  not  so  similar  to  the  label  with  the  medal- 
lion in  the  corner  as  to  be  calculated  to  deceive. 

593.  In  re  Hyde  &  Co.  [T.  M.  A.  1875]. 

January  18,  1878.     Jessel,  M.  R.—  1  Ch.  D.  724;  38  L.  T.  N.  S.  777  ;  26 
W.  R.  625;  1  Trade-Marks,  245. 

HYDE  &  Co.  obtained  the  registration  of  the  words  "  Bank 
of  England"  which  they  had  used  on  sealing-wax  for  upwards 
of  forty  years  as  their  trade-mark  on  that  article,  notwith- 
standing that  the  words  had  been  used  by  various  other  seal- 
ing-wax makers  for  different  periods  up  to  thirty  years,  and 
for  at  least  six  years  to  Hyde  &  Co.'s  knowledge. 

On  motion  by  other  firms  of  manufacturers  of  sealing-wax 
for  the  removal  of  the  mark  from  the  register  : 

Held,  (1.)  that  where  an  old  mark  had  been  used  habitually 
by  more  than  three  firms  on  the  same  class  of  goods,  it  had 
become  a  common  mark  and  incapable  of  appropriation ;  (2.) 
that  this  was  the  case  with  the  words  in  question,  and  that 
the  registration  must,  therefore,  be  rescinded ;  (3.)  that  Hyde 
&  Co.  having  registered  a  mark  to  which  they  were  not  enti- 
tled, and  having  declined  until  the  hearing  of  the  motion  to 
consent  to  the  rectification  of  the  register,  they  must  pay  the 
costs  of  the  motion,  notwithstanding  that  the  firms  moving  in 
the  matter  had  allowed  the  mark  to  be  placed  on  the  register 
without  opposition. 

340 


IN  RE  HALL  &  CO. 

594.   Hinrichs  v.  Berndes. 

January  18,  1878.     Jessel,  M.  R.—W.  N.  1878,  p.  11  ;  L.  J.  Notes  of  Cos. 

1878,  p.  11. 

MOTION  for  an  injunction  to  restrain  the  publication  of 
certain  libellous  statements  refused  ;  but 

Held,  that  if  a  plaintiff  in  an  action  of  libel  had  obtained 
a  verdict,  and  the  libel  were  repeated,  damages  might  be 
given  at  the  hearing  for  the  past  libel,  and  at  the  same  time 
its  continuance  in  the  future  be  restrained  by  injunction. 


595.  Marcovitch  v.  Bramble,  Wilkins  &  Co. 
January  24,  1878.     Malins,  V.  C. 

ON  motion  to  commit  for  contempt  of  court  an  auctioneer, 
who  had  had  served  on  him  a  notice  of  an  injunction  which 
had  been  granted  to  restrain  his  firm  from  offering  for  sale  a 
parcel  of  cigarettes  marked  with  the  plaintiff's  trade-mark, 
the  words  "  Vanity  Fair"  and  who  had  nevertheless  offered 
them  for  sale,  but  without  success,  he  supposing  the  notice 
of  injunction  to  require  some  further  official  authentication  : 

Held,  that  while  the  defendant  had  made  himself  liable  to 
committal,  under  the  circumstances,  he  should  only  be  required 
to  submit  to  the  injunction  and  pay  the  costs. 


596.  In  re  Hall  &  Co. 
In  re  Atkinson. 

February  2,  1878.     U.  S.  Patent  Office:  Doolittle,  Act.  Comm.—l3  U.  S. 

Pat.  Gaz.  229. 

ON  two  separate  applications  for  the  registration  of  the 
name  "  Calhoun  "  as  a  trade-mark  on  ploughs  : 

Held,  that  although  the  name  had,  when  first  used,  been 
the  valid  trade-mark  of  the  firm  of  Calhoun  and  Atkinson, 
under  the  latter  of  whom  both  applicants  claimed,  it  had  since 
then  become  publici  juris  by  being  used  by  a  number  of 

341 


EX  PARTE  THE  KING  OF  SAXONY. 

firms  without  opposition  by  the  representatives  of  Calhoun 
and  Atkinson,  and  that  registration  must,  therefore,  be  re- 
fused in  both  cases.1 


597.  In  re  Horsburgh  [T.  M.  A.  1875]. 
February  3,  1878.    Jessel,  M.  R.  —  l  Trade-Marks,  260. 

THE  registered  proprietors  of  a  trade-mark  used  by  them 
on  lubricating  oils,  and  consisting  of  a  certain  device  with  the 
word  "  Valvoline"  opposed  an  application  by  other  oil  mer- 
chants for  the  registration  in  their  name  of  another  trade- 
mark, consisting  of  an  entirely  different  device  with  the  word 
" Valvoleum"  on  the  ground  that  it  was  calculated  to  pro- 
duce deception. 

On  summons  adjourned  into  court : 

Held,  (1.)  that  each  of  the  words  in  question  was  simply 
equivalent  to  "  Valve  Oil"  and,  therefore,  merely  descriptive 
of  the  use  of  the  article  and  incapable  of  appropriation,  al- 
though, if  the  words  were  ornamented  in  some  special  man- 
ner, the  manner  of  ornamentation  might  be  claimed  ;  (2.)  that 
the  devices  used  in  combination  with  the  words  being  per- 
fectly distinct,  each  might  be  registered  with  or  without  the 
additional  word,  the  device  being  the  essential  particular, 
which  must  be  encroached  upon  for  the  trade-mark  to  be  in- 
fringed ;  (3.)  that  the  enactment  in  §  6  of  the  T.  M.  A.  1875, 
forbidding  the  registration  of  any  words  the  exclusive  use  of 
which  would  not,  by  reason  of  their  being  calculated  to  de- 
ceive or  otherwise,  be  deemed  entitled  to  protection  in  a  court 
of  equity,  has  reference  to  deceptiveness  inherent  in  the  mark 
itself,  and  not  to  any  question  of  comparison  or  similarity  be- 
tween two  or  more  trade-marks.2 

598.    Ex  parte  the  King  of  Saxony  [T.  M.  A.  1875]. 

February  7,  1878.     Hall,  V.  C.  —  1  Trade-Marks,  245. 
THE  King  of  Saxony  being  the  proprietor  of  certain  long- 
established  marks  for  porcelain,  which  had  been  registered  in 
i  See  McLean  T.  Fleming,  580.  a  See  Burnett  v.  Phalon,  277. 

342 


BRAHAM  V.  BEACHIM. 

England,  opposed  an  application  by  another  person  for  the 
registration  in  the  latter's  name  of  certain  marks  for  porcelain, 
on  the  ground  that  they  so  nearly  resembled  his  own  regis- 
tered marks  as  to  be  calculated  to  deceive. 

On  an  ex  parte  application  on  behalf  of  the  King  of  Saxony 
for  a  direction  as  to  the  mode  of  trial : 

Held,  that  the  case  should  be  heard  on  motion,  but  that 
leave  should  be  given  to  the  other  party  to  give  notice  of  mo- 
tion for  the  following  week  to  have  the  case  heard  in  some 
other  way,  if  he  wished  to  do  so. 

599.  Braham  v.  Beachim.     (1.) 

February  12,  1878.  Chanc.  Div. :  Fry,  J.—  7  Ch.  D.  848;  47  L.  J.  Ch. 
348 ;  38  L.  T.  N.  S.  640 ;  26  W.  R.  654. 

THE  principal  plaintiff,  Countess  Waldegrave,  being  the 
owner  or  lessee  of  all  the  collieries  within  the  parish  of  Rad- 
stock,  except  one  very  small  piece,  and  raising  and  selling  the 
coal  therefrom  under  the  style  of  "  The  Radstock  Coal  Com- 
pany" the  defendants  began  to  sell  coal  under  the  same  title ; 
after  which  the  plaintiff  changed  her  style  to  "  The  Countess 
Waldegrave's  Radstock  Collieries"  and  the  defendants  adopted 
the  style  of  "  The  Radstock  Colliery  Proprietors"  and,  upon 
remonstrance,  of  "  The  Radstock  Coal  Company  Colliery  Pro- 
prietors," in  newspapers  and  on  their  office  blind,  although 
they  were  never  entitled  to  raise  coal  within  the  parish  of 
Radstock,  nor,  until  after  the  commencement  of  the  action, 
within  any  part  of  the  district  through  which  the  seams  of 
Radstock  coal  extended. 

Action  by  the  Countess  and  her  trustees  for  an  injunction 
to  restrain  the  defendants  from  infringing  their  rights. 

Held,  (1.)  that  the  defendants  were  not  entitled  to  call 
themselves  "  The  Radstock  Colliery  Proprietors"  since  that 
was  calculated  to  attract  to  them  custom  intended  for  the 
plaintiff  as  practically  the  only  colliery  proprietor  in  the  par- 
ish, as  well  as  the  largest  proprietor  in  the  district ;  (2.)  that 
the  defendants  were  not  entitled  to  style  themselves  proprietors 

343 


IN  RE  PATON. 

of  collieries  at  Radstock,  since  that  designation  also  pointed  to 
the  parish,  and,  therefore,  to  the  plaintiff's  works ;  (3.)  that 
the  course  of  conduct  adopted  by  the  defendants  was  calcu- 
lated to  deceive,  and  that  proof  of  actual  damage  having  been 
sustained  by  the  plaintiff  was,  therefore,  not  requisite ;  (4.) 
that  an  in  junction  must,  therefore,  be  granted  to  restrain  the 
defendants  from  using  either  of  the  above  appellations ;  (5.) 
but  that  this  injunction  should  not  extend  to  prevent  the  de- 
fendants from  adopting  those  appellations  if  they  should  at 
any  time  become  owners  or  lessees  of  collieries  within  Rad- 
stock parish.1 


60O.  In  re  Lisner. 

February  14,  1878.     U.  S.  Patent  Office:  Doolittle,  Act.  Comm.  —  lS  U. 
S.  Pat.  Gaz.  455. 

ON  an  application  for  the  registration  of  a  trade-mark  in 
respect  of  "  fancy  goods  :  " 

Held,  that  although  a  trade-mark  might  be  registered  on  a 
single  application  for  an  entire  class  of  merchandise,  it  could 
not  be  so  registered  for  the  numerous  classes  of  goods  included 
in  the  term  "  fancy  goods,"  and  that  registration  must,  there- 
fore, be  refused  until  the  particular  class  of  goods  in  respect 
of  which  the  application  was  made  was  more  clearly  specified. 


601.  In  re  Paton  [T.  M.  A.  1875]. 
March  1,  1878.     Jessel,  M.R.  —  l  Trade-Marks,  285. 

AN  application  for  the  registration  of  the  word  "  Alloa  "  as 
the  applicants'  trade-mark  for  woollen  yarns  being  opposed,  — 

On  motion  for  a  direction  as  to  the  manner  in  which  the 
case  should  be  heard: 

Held,  (1.)  that  the  case  should  be  heard  on  summons  taken 

out  by  the  opponents  and  adjourned  into  court ;  (2.)  that  a 

delivery  at  the  Trade-Marks  Registry  Office  by  the  opponents' 

solicitors  of  a  copy  of  the  notice  of  the  opposition  motion,  to- 

1  See  Newman  v.  Alvord,  282. 

344 


FULLWOOD  V.  FTJLLWOOD. 

gether  with  a  copy  of  the  indorsement  of  acceptance  by  the 
applicants'  solicitors,  was  a  sufficient  compliance  with  the  re- 
quirement in  the  Instructions  to  Applicants  for  Registration 
(paragraph  37),  for  notice  of  the  opposition  motion  having 
been  brought  before  the  court  to  be  given  to  the  Registrar  of 
Trade-Marks,  by  the  delivery  at  the  office  by  the  opponents' 
solicitors  of  a  copy  of  the  notice  of  motion,  with  an  indorse- 
ment of  service  on  the  applicants,  signed  by  the  opponents' 
solicitors,  and  that  the  personal  service  on  the  applicants  and 
the  indorsement  might  be  dispensed  with. 


602.  Fullwood  v.  Fullwood.     (2.) 

March  5, 1878.     CJianc.  Div. :  Fry,  J.  —  9  Ch.  D.  176  ;  47  L.  J.  Ch.  459  ; 
38  L.  T.  N.  S.  380  ;  26  W.  R.  435. 

THE  plaintiff  carrying  on  at  Somerset  Place,  Hoxton,  the 
business  of  an  annatto  manufacturer,  established  by  his  father 
in  1785,  under  the  name  of  "  R.  J.  Fullwood  $  Ob.,"  the  de- 
fendants, one  of  whom  had  formerly  been  the  plaintiff's  part- 
ner, but  had  sold  his  interest  to  the  plaintiff,  began  to  carry 
on  the  same  business  under  the  name  of  "  E.  Fullwood  $  Co." 
and  to  put  out  advertisements,  in  which  they  described  them- 
selves as  "  late  of  Somerset  Place,  Hoxton,  Original  Manufact- 
urers of  Liquid  and  Cake  Annatto"  and  their  business  as 
having  been  "  Established  in  1785" 

Action  by  the  plaintiff  for  an  injunction  to  restrain  the  de- 
fendants from  representing  their  business  to  be  identical  with 
or  similar  to  his  own. 

Held,  (1.)  that  the  defendants  had  acted  in  a  way  intended 
and  calculated  to  produce  deception  ;  (2.)  that  the  fact,  if  it 
were  established,  that  the  plaintiff  had  delayed  till  November, 
1876,  to  commence  his  action,  he  having  been  aware  of  the 
defendants'  conduct  early  in  1875,  was  no  defence,  the  period 
fixed  by  the  statute  of  limitations  not  having  elapsed ;  (3.) 
and  that  the  injunction  must  be  granted. 

"  The  right  asserted  by  the  plaintiff  in  this  action  is  a  legal  right. 
He  is  in  effect  asserting  that  the  defendants  are  liable  to  an  action 

345 


HAGG  V.  BARLEY. 

for  deceit.  It  is  clear  that  such  an  action  is  subject  to  the  statute  of 
limitations,  and  it  is  also  clear  that  the  injunction  is  sought  merely 
in  aid  of  the  plain  tiff's  legal  right.  In  such  a  case  the  injunction  is, 
in  my  opinion,  a  matter  of  course  if  the  legal  right  be  proved  to  exist. 
In  saying  that,  I  do  not  shut  my  eyes  to  the  possible  existence  in 
other  cases  of  a  purely  equitable  defence,  such  as  acquiescence  or  ac- 
knowledgment, and  the  various  other  equitable  defences  which  may 
be  imagined.  But  mere  lapse  of  time,  unaccompanied  by  anything 
else,  and  to  that  I  confine  my  observations,  has,  in  my  judgment,  just 
as  much  effect  and  no  more  in  barring  a  suit  for  an  injunction  as  it 
has  in  barring  an  action  for  deceit."  1 


603.  Prese  v.  Bachof.     (2.) 

March  22,  1878.     U.  S.  C.  C.  S.  Dt.  of  N.  Y. :   Wheeler,  J.—  13   U.  S. 

Pat.  Gaz.  635. 

THE  plaintiffs  being  a  firm  of  tea-merchants,  who  sold 
"  Hamburg  Tea  "  in  a  peculiar  form  of  package,  the  tea  being 
enclosed  in  long  cylindrical  parcels  with  pink  wrappers,  and 
with  crimson  papers  of  directions  and  yellow  ones  of  warning 
tied  in,  and  having  a  white  label  with  the  firm  name  within 
a  circle  pasted  across  the  ends  of  the  string,  and  another 
white  label  with  the  same  and  the  words  "  Hamburg  Hopf en- 
sack,  6  "  embossed  thereon,  pasted  on  the  package,  the  defend- 
ant at  first  put  up  his  tea  in  a  precisely  similar  manner,  with 
the  firm  name  and  address,  but  after  the  commencement  of 
the  suit  discontinued  the  use  of  the  firm  name  and  address, 
and  substituted  his  own. 

Injunction  granted  to  restrain  the  defendant  from  using 
packages  similar  to  those  of  the  plaintiffs,  and  an  account 
ordered.2 

604.  Hagg  v.  Darley. 
March  25,  1878.     Bacon,  V.  C.  —  47  L.  J.  Ch.  567  ;  38  L.  T.  N.  S.  312. 

THE  plaintiff  purchased  from  the  "  Government  Sanitary 
Company"  composed  of  the  defendant  and  three  others,  the 

1  See  McLean  v.  Fleming,  580 ;  Cons.         2  See  Williams  v.  Johnson,  150. 
Fruit  Jar  Co.  v.  Thomas,  668. 

346 


STEUART  V.  GLADSTONE. 

good-will  of  their  business  of  manufacturing  certain  fluids  and 
soaps  known  as  the  "  Government  Carbolic  Disinfectants " 
(on  which  occasion  the  defendant  and  his  partners  covenanted 
with  the  plaintiff  not  to  manufacture  or  sell  disinfectants  for 
fourteen  years,  nor  for  the  same  time  to  disclose  the  secrets 
of  the  manufactures  in  question),  and  carried  on  the  busi- 
ness of  the  company  under  the  old  name  with  the  defendant 
as  his  manager. 

Action  by  the  plaintiff,  alleging  that  the  defendant  had  left 
his  employ  and  set  up  in  business  as  the  "  Old  G-overnment 
Sanitary  Company  "  and  was  committing  other  breaches  of 
the  covenant  by  communicating  the  secret  to  his  workmen, 
etc.,  and  claiming  an  injunction  to  restrain  the  defendant 
from  using  the  name,  carrying  on  the  manufacture  of  disin- 
fectants, communicating  the  secret,  etc. 

Demurrer  by  the  defendant  overruled,  on  the  ground,  that 
(1.)  the  defendant  had  both  pleaded  and  demurred  without 
the  leave  of  the  court,  under  Order  XXVIII.  Rule  5  ;  (2.) 
the  covenant  was  not  too  wide  or  unreasonable. 

605.  Steuart  v.  Gladstone. 

March  25,  1878  ;  March  4,  1879.  Chanc.  Div. :  Fry,  J.  — 10  Ch.  D.  646 ; 
47  L.  J.  Ch.  423  ;  38  L.  T.  N.  S.  557  ;  26  W.  R.  657.  Ct.  of  App. : 
Jessel,  M.  R. ;  James  and  Bramwell,  L.  JJ.  —  IQ  Ch.  D.  626 ;  40  L.  T.  N. 
S.  145;  27  W.  R.  512. 

PAKTNEKSHIP  action. 

The  plaintiff  had  been  expelled  from  the  defendants'  firm 
of  commission  merchants,  in  which  he  had  been  a  partner,  and 
which  was  carried  on  under  articles,  one  of  which  provided 
that  a  retiring  partner  should  receive  the  share  in  the  part- 
nership property  to  which  he  was  entitled  upon  the  basis  of 
annual  accounts  taken,  under  another  article,  of  the  partner- 
ship "  estate  and  effects,"  provision  being  thereby  made  for  a 
fair  valuation  and  appraisement  of  all  the  particulars  included 
in  such  accounts,  which  might  be  in  their  nature  susceptible 
of  valuation,  but  no  mention  being  made  of  the  good- will  of 

the  business. 

347 


WARD  V.  DRAT. 

Held)  on  appeal,  that  the  share  of  partners  in  the  good-will 
of  a  commission  business  not  being  ordinarily  estimated  in 
calculating  their  annual  share  of  profits,  and  it  not  having 
been  so  in  the  present  case,  the  good-will  could  not  be  taken 
into  account  and  valued  as  being  included  in  the  partnership 
"  estate  and  effects." 


606.  Saxby  v.  Easterbrook. 
March  25,  1878.     C.  P.  Div.  —  3  C.  P.  D.  339  ;  27  W.  R.  188. 

ACTION  for  damages,  and  an  injunction  to  restrain  the 
publication  of  statements  with  regard  to  certain  patents,  the 
property  of  the  plaintiff,  which  statements  were  found  by  the 
jury  to  be  libellous. 

Held,  that  the  question  of  libel  or  no  libel  having  been 
decided  by  the  verdict  of  the  jury,  the  injunction  must  be 
granted. 

Per  Lindley,  J.  "  The  principle  upon  which  the  courts  of  equity 
have  acted  in  declining  to  restrain  the  publication  of  matter  alleged 
to  be  libellous  is,  that  the  question  of  libel  or  no  libel  is  preemi- 
nently for  a  jury.  But,  when  a  jury  have  found  the  matter  com- 
plained of  to  be  libellous,  and  that  it  affects  property,  I  see  no  prin- 
ciple by  which  the  court  ought  to  be  precluded  from  saying  that  the 
repetition  of  the  libel  shall  be  restrained." 

607.  "Ward  v.  Drat. 
April  3,  1878.     Chanc.  Div. :  Fry,  J.  —  L.  J.  Notes  of  Cos.  1878,  p.  67. 

MOTION  for  an  injunction  to  restrain  the  defendant  from 
sending  libellous  demands  for  payment  of  rent  having  been 
refused  by  Malins,  V.  C.,  who  reserved  the  costs  : 

Held,  that  the  court  had  no  authority  to  grant  an  injunc- 
tion in  such  a  case,  either  original,  or  under  the  Judicature 
Act,  1873,  §  25,  sub-s.  8. 

348 


ENO  V.  STEPHENS. 

608.    Rose   v.   Loftus. 
April  10,  1878.     Malins,  V.  C.  —  47  L.  J.  CA.576;  38  L.  T.  N.  S.  409. 

THE  plaintiff  being  a  manufacturer  of  lime  juice,  which 
he  sold  in  bottles  moulded  specially  for  him  with  a  spray  of 
lime-tree  leaf  and  blossom  and  his  name  "  Rose  £  Co."  and 
who  further  placed  on  these  bottles  a  label  containing  the 
same  spray  and  name,  the  defendant,  who  manufactured  a 
similar  article,  on  one  occasion,  at  the  request  of  a  customer, 
filled  some  of  the  plaintiff's  bottles  brought  to  him  by  the 
customer  with  his  own  article,  but  washed  the  plaintiff's  labels 
from  the  bottles  and  replaced  them  with  his  own,  and  also 
gave  the  customer  a  large  printed  card  with  the  words  "Lof- 
tus1  Lime  Juice  Cordial"  for  public  exhibition. 

Action  by  the  plaintiff  for  an  injunction  to  restrain  the  de- 
fendant from  infringing  his  rights. 

Held,  (1.)  that  the  defendant  had  acted  wrongfully,  not- 
withstanding that  he  had  placed  his  own  labels  on  the  bot- 
tles, since  they  still  bore  the  plaintiff's  name  and  mark ;  (2.) 
but  that  he  had  not  acted  with  any  fraudulent  intention,  and 
that  charges  of  fraud  made  by  the  plaintiff  in  his  statement 
of  claim  were  not  established  ;  (3.)  and,  therefore,  that  on 
the  defendant  undertaking  not  to  repeat  the  act  the  injunction 
should  not  be  granted,  nor  any  costs  or  account  of  profits.1 


6O9.  Eno  v.  Stephens. 

April  11,  May  29,  1878.     Bacon,  V.    C.  —  l  Trade- Marks,  324.     Ct.  of 
App:  Jessel,  M.  R.;  James  and  Bramwell,  L.  JJ.  —  1  Trade-Marks,  325. 

THE  plaintiff  being  the  proprietor  of  "  Una's  Fruit  Salt" 
who  had  for  some  time  used,  and  had  registered  under  the  T. 
M.  A.  1875  certain  labels  containing,  with  other  words  and 
devices,  those  words,  and  the  words  "  Fruit  Salt"  "  Fruit 
Saline,"  or  "  Fruit  Powder,"  without  the  name,  the  defend- 
ant sold  certain  preparations  under  the  names  of  "Fruit 

1  See  Millington  v.  Fox,  63. 

849 


IN  RE  MITCHELL. 

Saline"  "  Stephens  $  Co.'s  Effervescing  Vinous  Fruit  Salts," 
and  "  Stephens'  Vinous  Salts." 

Injunction  granted  to  restrain  the  defendant  from  using  the 
words  "  Fruit  Salt"  "  Fruit  Saline"  or  "  Fruit  Powder"  or 
any  such  combination  of  words. 


610.  In  re  Leonardt  [T.  M.  A.  1875]. 
April  12,  1878.    Jewel,  M.R.  —  l  Trade-Marks,  316. 

A  STEEL-PEN  manufacturer  procured  the  registration,  as 
parts  of  his  trade-marks  on  pens,  of  certain  words  and  devices, 
consisting  respectively  of  the  royal  arms,  the  words  "  Penna 
Vittorio  Emmanuele  "  with  a  portrait,  the  word  "  Garibaldi  " 
with  a  portrait,  the  word  "  Masonic  "  with  the  Masonic  arms, 
and  the  words  "  Selected"  "  Improved"  "  Superior"  "  Office" 
"  Commercial"  and  "International,"  those  words  and  devices 
having  been  in  common  use  by  more  than  three  firms  of  steel- 
pen  makers  for  some  years. 

On  motion  by  certain  firms  of  steel-pen  manufacturers,  and 
with  the  consent  of  the  registered  proprietor : 

Held,  that  there  must  be  added  to  the  registration  of  the 
marks  in  question  a  note  containing  a  disclaimer  of  an  ex- 
clusive right  in  the  particulars  specified. 


611.  In  re  Mitchell  [T.  M.  A.  1875].    (2.) 

April  12,  1878.    Jessel,  M.  R.—  W.N.  1878,^.  101;  1  Trade-Marks, 

317. 

THE  words  "  Selected  Pens,  London,"  together  with  the 
arms  of  the  city  of  London,  were  registered  by  a  steel-pen 
manufacturer  as  his  trade-mark  on  steel-pens,  the  word  "  Se- 
lected "  having  been  in  common  use  by  more  than  three  firms 
of  steel-pen  makers. 

On  motion  by  certain  firms  of  steel-pen  manufacturers  : 
Held,  that  on  evidence  of  the  consent  of  the  registered  pro- 
prietor being  produced,  a  note  must  be  added  to  the  registra- 

350 


DUWEL  V.  BOHMER. 


tion  of  the  mark  in  question,  to  the  effect  that  the  word 
"  Selected  "  in  the  above-mentioned  mark  was  common  to  the 
pen  trade. 


612.  In  re  Rader  &  Co. 

April  16,  1878.     U.  S.  Patent  Office:  Spear,  Comm.  —  lZ  U.  S.  Pat.  Gaz. 

596. 

APPLICATION  for  the  registration  of  the  words  '•'•Iron  Stone" 
enclosed  in  an  oval  border  (other  words  descriptive  of  the 
article  and  place  of  sale  or  manufacture  being  also  included 
within  the  border),  as  a  trade-mark  on  water-pipes,  refused, 
on  the  ground  that  the  words  were  in  themselves  merely  de- 
scriptive of  the  substance  of  the  pipes,  and  that  the  oval  bor- 
der in  which  they  were  enclosed  did  not  give  the  requisite 
distinctiveness  ;  and,  further,  that  the  oval  border  was  not  as- 
sociated with  the  words  in  question  only. 


613.  Duwel  v.  Bohmer. 

AprU,  1878.     U.  S.  C.  C.  S.  Dt.  of  Ohio :  Swing,  J.  —  14  U.  S.  Pat.  Gaz. 

270. 

SUIT  by  a  citizen  of  the  State  of  Ohio  for  an  injunction  to 
restrain  an  infringement  of  his  trade-mark,  registered  in  pur- 
suance of  the  statutes  of  the  United  States,  by  another  citizen 
of  Ohio. 

Demurrer,  on  the  ground  that  the  U.  S.  Circuit  Court  had 
no  jurisdiction  in  such  a  suit  between  citizens  of  the  same 
state,  overruled  ;  and  Held,  that  the  U.  S.  Circuit  Courts  had 
jurisdiction  in  trade-mark  cases  between  citizens  of  the  same 
state  concurrent  with  that  of  the  state  courts.1 

1  This  decision  has  been  rendered  v.  Steffens,  declaring  the  acts  of  Con- 
obsolete  by  that  of  the  Supreme  Court  gress  concerning  trade-marks  uncon- 
of  the  United  States  in  United  States  stitutional. 

351 


IN  RE  JELLEY,  SON  &  JONES. 

614.  Rolt  v.  Bulmer. 
May  13,  1878.     Jessel,  M.  R.  —  W.  N.  1878,  p.  119. 

ACTION  for  a  dissolution  of  partnership  and  accounts,  the 
partnership  having  been  carried  on  under  articles  which  pro- 
vided for  an  account  being  taken,  at  the  determination  of  the 
partnership,  of  the  partnership  "  moneys,  stock  in  trade,  debts, 
effects,  and  things,"  but  did  not  directly  refer  to  the  good-will 
of  the  business. 

Held,  that  the  good-will  must  be  taken  into  account,  as  be- 
ing included  in  the  "effects  and  things." 


615.  Reynolds  v.  Bullock. 

May  13,  1878.     Hall,  V.  C.  — 47  L.  J.  Ch.  773;  39  L.  T.  N.  S.  443;  26 

W.  R.  678. 

ACTION  for  a  partnership  account  commenced  by  one  of  two 
members  of  a  partnership  firm,  on  the  expiration  of  the  part- 
nership term,  the  partnership  having  been  carried  on  under 
articles  which  provided  for  the  valuation  of  the  partnership 
"  property  and  effects  "  on  the  dissolution,  but  contained  no 
reference  to  the  good-will  of  the  business. 

Held,  that  there  being  no  direct  negative  stipulation  in  the 
articles,  the  good-will  must  be  taken  into  account  and  valued, 
as  being  included  in  the  "property  and  effects." 


616.  In  re  Jelley,  Son  &  Jones  [T.  M.  A.  1875]. 
May  18,  1878.    Jessel,  M.R.  —  l  Trade-Marks,  346. 

APPLICATION  having  been  made  for  the  registration  of  a 
device,  consisting  of  a  pointer  eating  out  of  a  porridge-pot 
(which  the  applicants  had  long  used  on  a  variety  of  metal 
goods  contained  in  class  13,  but  not  on  other  goods),  as  an  old 
trade-mark  for  class  13,  and  as  a  new  trade-mark  for  other 
classes,  in  particular  for  class  12,  containing  cutlery  and  edge- 
tools,  and  for  fencing  wire,  being  one  of  the  kinds  of  goods 
included  in  class  5  ;  the  application  was  opposed  by  the  pro- 

352 


GUINNESS  V.  HEAP. 

prietor  of  another  trade-mark,  consisting  of  a  device  of  a 
pointer  dog  standing  at  a  point,  with  the  word  "  Staunch," 
and  registered  for  all  the  goods  contained  in  classes  5, 12,  and 
13,  on  the  ground  that  the  applicants'  device  so  nearly  resem- 
bled his  as  to  be  calculated  to  deceive. 

On  summons  adjourned  into  court : 

Held,  (1.)  that  with  respect  to  old  marks  the  rule  of  the 
court  was  to  permit  registration  of  even  identical  old  marks, 
up  to  the  number  of  three,  though  if  more  than  three  applica- 
tions for  the  registration  of  the  same  old  mark  were  received 
it  must  be  treated  as  common  ;  and  that,  with  regard  to  class 
13,  the  mark  being  a  bond  fide  old  mark,  must  be  admitted  to 
registration  ;  (2.)  that  with  respect  to  new  marks,  it  was  the 
duty  of  a  person  about  to  adopt  one  to  make  it  as  distinct 
as  possible,  and  that  the  fact  that  a  man  had  been  in  the  habit 
of  using  a  certain  trade-mark  on  one  class  of  goods  did  not  en- 
title him  to  begin  to  use  it  on  another  class  if  it  would  inter- 
fere with  another  person's  mark,  and,  therefore,  with  respect 
to  class  12,  that  inasmuch  as  the  applicants'  mark  so  nearly 
resembled  the  opponent's  as  to  be  calculated  to  deceive,  es- 
pecially when  they  were  compared  as  stamped  on  the  metal, 
registration  in  class  12  must  be  refused  ;  (3.)  that,  with  re- 
spect to  class  5,  the  mark  might  be  registered  in  that  class 
for  fencing-wire  only,  as  that  would  not  interfere  with  the 
opponent's  trade  ;  (4.)  that  no  order  could  be  made  as  to 
costs. 


617.  Guinness  v.  Heap. 
May  30,  1878.     Malins,  F.  C. 

THE  plaintiff  being  a  brewer  of  stout,  who  used  a  trade- 
mark on  his  bottles  containing  the  words  "  Guinness'  Extra 
Stout,"  with  a  harp,  the  defendant  sold  other  beer  in  bottles 
bearing  labels  of  the  same  shape  as  those  used  by  the  plain- 
tin0,  but  which  had  the  words  "  Genuine  Extra  Stout"  substi- 
tuted for  the  words  "  Guinness'  Extra  Stout  "  in  the  plaintiff's 
23  353 


MERCHANT  BANKING  CO.  V.  JOINT  STOCK  BANK. 

mark,  and  also  contained  a  device  in  imitation  of  the  harp 
used  by  the  plaintiff. 

Injunction  granted  to  restrain  the  defendant  from  infring- 
ing the  plaintiff's  rights,  notwithstanding  that  the  defendant 
had  altered  the  device,  discontinued  the  use  of  the  labels,  and 
offered  to  undertake  not  to  use  any  more  of  them. 


618.    The  London   and   County  Banking  Co.  v.  The 
Hampshire  and  North  Wilts  Bank. 

June  7,  1878.     Jessel,  M.  R. 

MOTION  by  the  plaintiff  company,  under  §  20  of  the  Com- 
panies Act,  1862,  for  an  injunction  to  restrain  the  defendants 
from  changing  their  name  to  "  The  Capital  and  Counties 
Bank  "  refused,  on  the  ground  that  the  adoption  of  the  latter 
name  by  the  defendants  was  not  calculated  to  deceive  per- 
sons who  used  ordinary  care  in  the  conduct  of  their  business 
transactions. 

619.  The  Merchant  Banking  Company  of  London  (Lim- 
ited) v.  The  Merchants'  Joint  Stock  Bank. 

June  29,  1878.     Jessel,  M.  R.  —  9  Ch.D.  560  ;  47  L.  J.  Ch.  828;    26  W. 

R.  847. 

ON  motion  by  the  plaintiff  company  for  an  injunction  to 
restrain  the  defendant  company  from  using  its  name  recently 
assumed  and  registered,  as  being  too  similar  to  the  name  of 
the  plaintiff  company,  or  any  other  too  similar  name  : 

Held,  (1.)  that  inasmuch  as  §  20  of  the  Companies  Act, 
1862,  only  affected  the  question  of  registration  of  the  name 
of  a  company,  the  rights  of  companies  after  registration  were 
not  varied  by  that  enactment ;  (2.)  that  the  similarity  be- 
tween the  names  was  not  sufficient  to  show  an  intention  or 
probability  of  deception ;  (3.)  and  that  the  motion  must, 
therefore,  be  refused. 

354 


IN  HE  ROSING. 

62O.  Ex  parte  Sales  Pollard  &  Co.   [T.  M.  A.  1875]. 
July  8,  1878.     Jessel,  M.  R. 

ON  motion  by  the  registered  proprietors  of  a  trade-mark  on 
snuff,  consisting  of  the  letters  "  S.  P."  (the  initials  of  the 
firm),  which  they  had  discovered,  subsequently  to  registra- 
tion, to  have  been  in  common  use  for  many  years  in  the  snuff 
trade,  though  used  originally  by  themselves  : 

Leave  given  to  rectify  the  register  by  striking  out  the  mark 
in  question. 

621.  In  re  Rosing  [T.  M    A.  1875]. 

July  11,  November  13,  1878.     Bacon,  V.  C.  —  l   Trade-Marks,  Ml.     Ct. 
of  App. :  Jessel,  M.  R.;  Baggallay  and  Thesiger,  L.  JJ. 

APPLICATION  having  been  made  for  the  registration  of  the 
applicant's  family  arms,  consisting  of  a  sprig  of  two  roses  and 
a  twisted  horn,  as  his  trade-mark  for  several  classes  of  goods, 
and  among  others  for  classes  5, 12,  and  13,  containing  cutlery 
and  other  metal  goods,  the  Cutlers'  Company  of  Sheffield  op- 
posed the  application  as  to  classes  5, 12,  and  13,  on  the  ground 
that  the  mark  in  question  so  nearly  resembled  a  Sheffield  cor- 
porate mark  many  years  previously  assigned  to  another  manu- 
facturer of  cutlery,  and  still  used  by  him,  as  to  be  calculated 
to  deceive,  the  latter  mark  consisting  of  a  plain  horn  suspended 
by  a  looped  cord. 

On  motion  by  the  applicant  for  a  direction  to  the  registrar 
to  register  the  mark  in  the  classes  in  question  : 

Held,  by  the  V.  C. :  (1.)  that  the  two  marks  were  not  suf- 
ficiently similar  for  deception  to  be  anticipated,  and  that  the 
applicant's  mark  must,  therefore,  be  registered  ;  (2.)  that  the 
Cutlers'  Company  must  pay  the  costs,  notwithstanding  that 
they  had  intended  to  act  in  the  public  interest. 

Held,  by  the  Court  of  Appeal :  (1.)  that  the  two  marks 
were  too  similar,  especially  when  looked  at  as  stamped  on  the 
metal,  for  the  applicant's  mark  to  be  admitted  to  registration 
in  classes  12  and  13  (as  to  class  5  the  Cutlers'  Company  aban- 

355 


IN  RE  LYSAGHT. 


doned  their  opposition)  ;  (2.)  that  the  applicant  must  pay 
the  costs  of  the  appeal,  but  that  no  costs  of  the  motion  in  the 
court  below  could  be  given,  the  applicant  having  succeeded  as 
to  class  5. 


622.  In  re  Brook  [T.  M.  A.  1875-6-7]. 

July  13,  1878.     Hall,  V.  C.—  26  W.  R.  791. 

AN  application  having  been  made  for  the  registration  of  a 
considerable  number  of  trade-marks  in  respect  of  cotton  goods, 
the  Committee  of  Experts  at  Manchester  placed  half  of  the 
marks  in  the  first  class,  as  being  entitled  to  registration,  and 
the  other  half  in  the  second  class  as  not  being  so  entitled ; 
and  the  Registrar  of  Trade-Marks  refused  registration  to  the 
marks  so  placed  in  the  second  class,  and  further  divided  the 
marks  placed  in  the  first  class,  admitting  six  of  them  to  sepa- 
rate registration,  but  offering  only  representative  registration 
to  the  remainder,  on  the  ground  that  the  essential  feature  in 
all  of  them  was  a  device  consisting  of  a  goat's  head  crest,  and 
the  name  "  Brook's."  On  motion  by  the  applicants  for  the 
separate  registration  of  the  whole  of  the  marks :  Held,  (1.) 
that  as  to  the  marks  placed  by  the  committee  in  the  second 
class,  the  case  was  governed  by  In  re  Orr  Ewing  $•  Co.,  and 
that  the  court  was  debarred  from  reconsidering  the  decision 
of  the  committee ;  (2.)  that  as  to  the  marks  placed  in  the 
first  class,  but  offered  only  representative  registration,  the  case 
was  governed  by  In  re  Barrows,  and  that  separate  registration 
must  be  refused  ;  but  that  the  goat's  head  crest  and  the  name 
"  Brook's  "  should  each  be  registered  separately,  as  a  repre- 
sentative mark,  with  the  additional  words  to  mark  its  rep- 
resentative character  appended  to  each. 


623.  In  re  Lysaght  [T.  M.  A.  1875]. 
July  19,  1878.     Jessel,  M.  R. 

A  TRADE-MARK  having  been  registered  in  respect  of  the 
goods  contained  in  class  5,  on  motion  by  the  registered  proprie- 

356 


IN  RE  SAUNION  &  CO. 

tor,  order  made  to  rectify  the  register  by  limiting  the  regis- 
tration to  galvanized  sheet  iron,  on  which  alone  it  was  his  old 
mark. 

624.  Ex  parte  Walker  &  Co. 
July  25,  1878.     Matins,  V.  C. 

ON  motion  by  the  registered  proprietors  of  a  trade-mark  on 
iron,  consisting  of  the  letter  W.,  a  crown,  and  the  word  "  Neth- 
erton,"  leave  given  to  rectify  the  register  by  substituting  the 
word  '•'•Dudley  "  for  the  word  "  Netherton"  the  address  being 
held  not  to  be  an  essential  particular  of  the  trade-mark  in 
question. 

625.  In  re  Saunion  &  Co.   [T.  M.  A.  1875]. 
August  2,  1878.     Jessel,  M.  R. 

THE  Anglo-Portuguese  Oyster  Fisheries  Company  having 
been  for  some  years  in  the  habit  of  importing  oysters  dredged 
in  Portuguese  waters  into  England,  and  selling  them  there, 
either  without  previous  fattening,  or  after  fattening  at  beds  at 
Queenborough,  and  Saunion  &  Co.  having  acted  as  the  agents 
for  the  company  in  this  undertaking,  under  an  agreement 
which  amounted  in  law  to  an  agreement  for  a  partnership  ter- 
minable at  the  will  of  the  company,  the  partnership  was  dis- 
solved, and  the  connection  terminated  by  the  company,  who 
then  carried  on  business  through  a  new  agent.  Saunion  & 
Co.  afterwards  applied  for  the  registration  of  a  trade-mark 
consisting  of  a  device  containing,  among  other  particulars,  the 
words  "  Anglo-Portugo  Oysters,"  those  words  being  the  words 
by  which  the  company  had  designated  their  oysters,  and  they 
claimed  to  use  this  mark  upon  any  oysters  which  they  con- 
sidered to-be  of  the  same  breed  as  the  company's,  whether 
brought  from  Portugal  or  not. 

On  motion  by  the  company: 

Held,  that  the  inclusion  of  the  words  "  Anglo-Portugo  "  in 
the  applicants'  trade-mark  was  either  deceptive,  if  the  oysters 
did  not  come  from  Portugal,  or  descriptive,  if  they  did,  or  if 

357 


THE  HOOSIER  DRILL  CO.  V.  INGELS. 

the  words  denoted  a  particular  breed,  and  not  the  country  of 
origin,  and  that  the  words  must  be  struck  out  of  the  trade- 
mark which  it  was  proposed  to  register.1 

626.  In  re  Brandreth  [T.  M.  A.  1875]. 

August  8,  1878.      Jessel,  M.  R.  —  9  Ch.  D.  618  ;  47  L.  J.   Ch.  816  ;  27 

W.  R.  281. 

ON  application,  by  way  of  adjourned  summons,  for  the  reg- 
istration of  the  word  "  Porous  "  as  a  trade-mark  in  respect 
of  "  AllcocTc's  Porous  Plasters"  and  opposed  : 

Held,  (1.)  that  the  word  "  Porous "  was  descriptive,  and, 
therefore,  incapable  of  registration  ;  (2.)  that  in  any  case  it 
could  only  be  registered  as  included  in  the  phrase  "AllcocJc's 
Porous  Plasters,"  which  phrase  was  itself  descriptive  ;  (3.) 
that  the  application  must  be  refused  with  costs  ;  (4.)  that  the 
only  costs  which,  under  Order  LV.,  could  be  given  were  the 
costs  of  the  proceedings  subsequent  to  security  for  costs  being 
given  by  the  opponents,  that  being  the  time  when,  by  Rule  16 
of  the  Trade-Marks  Rules,  the  case  stood  for  the  determination 
of  the  court,  and  that  the  costs  of  the  previous  proceedings  in 
the  Trade-Marks  Registry  Office  could  not  be  given. 


627.  The  Hoosier  Drill  Co.  v.  Ingels. 

1878.     U.  S.  Patent  Office:  Doolittle,  Act.  Comm.  — 14  U.  S.  Pat.  Gaz. 

785. 

A  TRADE-MARK  having  been  registered  in  the  name  of 
Ingels  at  a  time  when  another  application  by  the  company 
for  the  same  trade-mark  was  pending,  and  an  interference 
having  been  declared  between  the  parties,  the  Commissioner 
of  Patents  held  that  only  the  question  of  priority  of  adoption 
could  be  inquired  into  on  an  interference,  and  not  questions  of 
disputed  ownership.  On  motion  by  the  company  to  rehear  : 
Held,  (1.)  that  neither  prior  invention,  use,  or  adoption  was 
necessary  to  entitle  to  the  registration  of  a  trade-mark  under 
1  See  Newman  v.  Alvord,  282. 

358 


THE  MANHATTAN  MEDICINE  CO.  V.  WOOD. 

the  U.  S.  Statute,  a  simple  intention  to  use  being  sufficient ; 
and  (2.)  that  in  investigating  the  title  to  a  trade-mark,  all 
matters  relating  to  the  ownership  should  be  gone  into,  and 
not  only  the  question  of  priority  of  adoption,  and  that  the 
motion  must  be  granted. 


628.  The  Manhattan  Medicine  Co.  v.  Wood. 

September  21,  1878.     U.  S.  C.  C.  Dt.  of  Me. :  Clifford,  J.  —14  U.  S.  Pat. 

Gaz.  519. 

THE  plaintiffs  manufactured  a  medicine  called  "Atwood's 
Vegetable  Physical  Jaundice  Bitters  "  (which  they  sold  in 
peculiar  shaped  bottles,  having  the  words  "  Atwood's  Genuine 
Physical  Jaundice  Bitters,  Greorgetoivn,  Mass."  blown  in  the 
glass,  and  bearing  a  yellow  label),  in  succession  to  the  firm  of 
Carter  &  Dodge,  who  had  purchased  from  the  original  inven- 
tor and  proprietor  the  right  to  manufacture  and  sell  the  medi- 
cine and  use  the  trade-mark  used  by  him,  but  not  in  Maine 
and  some  other  excepted  places.  The  defendant  in  1861  pur- 
chased from  the  son  of  the  original  proprietor  the  genuine 
secret  recipe  for  the  medicine,  to  be  used  in  Maine,  and  from 
that  time  till  the  commencement  of  the  suit  he  continued  to 
manufacture  and  sell  the  medicine  and  use  the  trade-mark 
without  interference,  though  it  did  not  appear  that  the  son 
had  sold  by  his  father's  authority.  Suit  for  an  injunction  and 
an  account. 

Held,  (1.)  that  the  plaintiffs  had  no  exclusive  right  to  sell 
the  medicine  or  use  the  trade-mark  ;  (2.)  that  neither  they 
nor  their  predecessors  in  title  had  ever  had  any  right  to  do 
so  in  Maine ;  (3.)  that  the  rights  possessed  by  some  of  the 
assignors  to  the  plaintiffs  had  been  lost  by  reason  of  their 
having  used  the  genuine  trade-marks  on  spurious  medicines 
of  inferior  quality ;  (4.)  that  the  plaintiffs  were,  further,  dis- 
entitled by  their  delay  ;  (5.)  that  the  plaintiffs'  assignors  had 
lost  whatever  right  they  had  in  the  trade-mark  by  not  confin- 
ing themselves  to  the  districts  to  which  alone  the  grants  from 
the  original  proprietor  extended;  (6.)  that  the  trade-mark 

359 


LEIDERSDORF  v.  FLINT. 

used  by  the  original  proprietor  had  been  abandoned  by  those 
claiming  under  him,  when  they  adopted  new  bottles  and  labels 
in  place  of  those  used  by  him  ;  (7.)  that  the  article  not  being 
patented,  and  the  defendant  being  in  possession  of  the  genuine 
recipe,  and  the  plaintiffs  having  no  exclusive  right,  and  none 
at  all  in  Maine,  the  defendant  could  not  be  restrained  from 
using  the  trade-mark,  and  that  the  injunction  must  be  refused 
with  costs.1 


629.  Leidersdorf  v.  Flint. 

1878.     U.  S.  C.  C.  E.  Dl.  of  Wise. :  Harlan  and  Dyer,  JJ.  —  IS  Am.  L. 

Rev.  390. 

THE  plaintiffs  and  defendant  being  alike  citizens  of  Wis- 
consin, the  defendant  used  upon  his  packages  of  tobacco  a 
trade-mark  which  the  plaintiffs  alleged  to  be  an  infringement 
of  that  used  by  them  on  theirs. 

Suit  for  an  injunction  to  restrain  the  defendant  from  in- 
fringing the  plaintiffs'  rights,  brought  under  the  U.  S.  Re- 
vised Statutes,  section  4942  (Act  of  1870,  section  79). 

On  demurrer: 

Held,  that,  inasmuch  as  Congress  was  only  authorized  by 
the  Constitution  of  the  United  States  to  "  secure  for  limited 
times  to  authors  and  inventors  the  exclusive  right  to  their  re- 
spective writings  and  discoveries,"  and  the  right  to  a  tra'de- 
mark  did  not  depend  upon  invention  or  originality  but  upon 
prior  user,  legislation  by  Congress  upon  the  subject  of  trade- 
marks was  ultra  vires  ;  and  therefore  that,  although  if  trade- 
marks had  been  within  the  legislative  power  of  Congress,  the 
federal  court  would  have  had  jurisdiction,  under  the  author- 
ity conferred  on  it  by  statute,  even  between  citizens  of  the 
same  state,  that  not  being  so,  the  demurrer  must  be  sustained 
on  the  ground  of  want  of  jurisdiction.2 

1  See  Seaburyv.  Grosvenor,562;  Me-        2  See  United  States  v.  Steffens,  660. 
Lean  v.  Fleming,  272. 

360 


EX  PARTE  LAWRENCE  &  CO. 

630.  Ex  parte  Lawrence  &  Co.   [T.  M.  A.  1875]. 
November  2,  1878.     Jessel,  M.  R. 

LAWRENCE  &  Co.,  carrying  on  business  as  manufacturers 
of  printers'  rollers  and  of  the  composition  used  for  coating 
the  same,  and  having  since  1872  used  a  trade-mark  thereon 
consisting  of  a  device  of  a  printer's  roller,  with  the  words 
"  The  Durable  "  in  an  oval,  their  manager,  Marler,  during 
the  absence  abroad  of  the  members  of  the  firm,  and  without 
their  knowledge,  obtained  the  registration  of  a  mark  substan- 
tially the  same  as  theirs  in  his  own  name,  describing  himself 
as  a  manufacturer  of  the  same  articles  as  his  employers,  and 
of  their  address. 

On  motion  by  Lawrence  &  Co.  for  rectification  of  the  reg- 
ister, either  by  the  insertion  of  their  firm  name  in  the  existing 
entry  in  place  of  that  of  Marler,  or  by  that  entry  being  ex- 
punged, with  liberty  for  them  to  proceed  to  advertise  their 
mark,  with  a  view  to  registration,  de  novo  : 

Held,  (1.)  that  relief  in  the  first  alternative  could  not  be 
granted,  since  the  registration  of  Marler,  having  been  effected 
without  instructions  from  the  applicants,  was  not  a  registra- 
tion on  their  behalf,  or  one  of  which  Marler  could  be  treated 
as  a  trustee  for  them,  but  a  wrongful  act  from  the  beginning, 
of  which,  if  the  applicants  wished  to  take  the  benefit,  they 
must  at  the  same  time  take  the  inconveniences,  so  that  the 
applicants  could  only  utilize  the  existing  entry  by  obtaining 
an  assignment  from  Marler ;  but  that  this  was  impossible, 
since  he  had  never  carried  on  any  business,  and,  therefore, 
could  not  assign  the  mark,  being  unable  to  assign  with  it  the 
good-will  of  the  business  in  which  it  was  used  ;  (2.)  that  the 
proper  method  of  rectifying  the  register  was  by  expunging 
the  improper  entry  altogether,  and  that  relief  must,  therefore, 
be  granted  in  the  second  alternative. 

361 


,  EX  PAKTE  EDE  BROS.  &  CO. 

631.    Day  v.  Brownrigg. 

November  6,  December  4,  1878.  Matins,  V.  C.  —  39  L.  T.  N.  S.  226. 
Ct.  of  App. :  Jessel,  M.  R. ;  James  and  Thesiger,  L.  JJ.  —  10  Ch.  D. 
294;  39  L.  T.  N.  S.  553;  27  W.  R.  217. 

THE  plaintiffs  being  the  owners  of  a  house  and  estate  at 
Ashford,  Middlesex,  known  as  "  Ashford  Lodge  "  and  "  The 
Ashford  Lodge  Estate"  the  defendant  acquired  another  house 
in  the  same  neighborhood,  known  as  "  The  Villa,  Ashford ,"  or 
"Ashford  Villa"  and  changed  the  name  to  "Ashford  Lodge" 

Action  for  an  injunction  to  restrain  the  defendant  from 
using  that  name  fro  the  injury  of  the  plaintiffs'  property. 

On  demurrer: 

Held,  by  the  Ct.  of  App. :  (1.)  that  the  plaintiffs  could  not 
acquire  an  exclusive  right  in  the  name  of  a  house  apart  from 
trade,  and  that  the  demurrer  must  be  allowed  ;  (2.)  that  no 
extended  power  of  granting  injunctions  was  conferred  upon  the 
court  by  the  Judicature  Act  of  1873,  s.  25,  sub-s.  8. 

632.  Ex  parte  Ede  Bros.  &  Co.   [T.  M.  A.  1875-6-7]. 
November  8,  1878.    Jessel,  M.  R. 

APPLICATION  having  been  made  for  the  registration  of  cer- 
tain trade-marks  for  goods  included  in  the  cotton  classes,  such 
trade-marks  were  placed  by  the  Manchester  Committee  of 
Experts  in  the  first  class  of  marks  submitted  to  them,  as  being 
marks  qualified  for  registration.  On  subsequent  application 
by  other  firms  for  the  registration  in  their  names  of  trade- 
marks substantially  identical  with  those  so  classed,  the  com- 
mittee placed  the  marks  in  respect  of  which  such  later  appli- 
cation was  made  in  their  second  class,  on  the  ground  that  the 
later  applicants  had  no  title  to  the  marks  which  they  sought 
to  register. 

On  motion  by  the  later  applicants  : 

Held,  that  the  function  of  the  Committee  of  Experts  was 
to  decide  whether  a  trade-mark  offered  for  registration  con- 
tained the  particulars  necessary  to  constitute  a  registrable 

362 


IN  RE  THOMAS. 

trade-mark,  and  not  to  decide  questions  of  title  between  rival 
claimants  ;  that  in  the  cases  in  question  the  committee  had 
acted  on  a  mistaken  view  of  their  functions  ;  and  that,  not- 
withstanding the  classification  by  the  committee,  the  registrar 
must  proceed  to  advertise  the  marks  with  a  view  to  registra- 
tion, leaving  the  question  of  title  to  be  decided  in  the  future, 
on  any  opposition  which  the  prior  claimants  might  offer  to  the 
registration  of  the  marks,  after  due  advertisement. 

633.    Braham  v.  Beachim.     (2.) 
November  14,  1878.     Chanc.  Div.:  Fry,  J. 

AFTER  the  decision  in  Braham  v.  Beachim  (1),  the  defend- 
ants in  that  case  acquired  a  colliery,  but  not  in  the  parish  of 
Radstock,  and  carried  on  business  as  "  The  Radstock  Coal  and 
Wagon  Co.,  Colliery  Proprietors,  Radstock,  /Somerset." 

Motion  by  the  plaintiffs  to  commit  the  defendants  for  breach 
of  the  injunction  refused,  on  the  ground  that  the  term  used  by 
the  defendants  did  not  imply  more  than  that  they  were  pro- 
prietors of  collieries,  whose  place  of  business  was  at  Radstock, 
which  they  were  entitled  to  state,  and  that  no  breach  of  the 
injunction  had  been  committed.1 


634.  In  re  Thomas. 

November  18,  1878.     U.  S.  Patent  Office  :  Doolittle,  Act.  Comm. — 14  U.  S. 

Pat.  Gaz.  821. 

ON  an  application  for  the  registration  as  a  trade-mark  of  a 
certain  device,  to  be  used  in  conjunction  with  other  words  and 
symbols,  among  which  were  certain  of  the  words  and  symbols 
used  in  Freemasonry : 

Held,  that  the  fact  that  such  words  and  symbols  were  used 
in  Freemasonry  did  not  disentitle  a  manufacturer  to  use 
them  in  his  trade,  by  reason  of  probability  of  deception  of 
the  public  or  otherwise,  and  that  the  application  must  be 
granted. 

1  See  Newman  v.  Alvord,  282. 

363 


MOSES  V.  SARGOOD,  EWEN  &  CO. 

635.  The  Singer  Manufacturing  Co.  v.  Loog. 
November  21,  1878.    Bacon,  V.  C. 

DUKESTG  the  pendency  of  an  action  by  the  plaintiffs  for  an 
injunction  to  restrain  the  English  agent  of  German  manu- 
facturers from  infringing  the  trade-mark  on  the  plaintiffs'  sew- 
ing machines,  the  publisher  of  a  newspaper  called  TJie  Sew- 
ing Machine  Grazette  published  a  paragraph  in  which  it  was 
stated  that  the  action  was  pending,  that  during  its  pendency 
unprincipled  traders  had  issued  unfair  and  illegal  advertise- 
ments, and  that,  after  the  conclusion  of  the  existing  action, 
further  proceedings  would  be  taken. 

Motion  by  the  defendant  to  commit  the  publisher  of  the 
newspaper  for  contempt  of  court  refused,  on  the  ground  that 
the  paragraph  in  question  was  not  calculated  to  prejudice  the 
fair  trial  of  the  action. 


636.  Moses  v.  Sargood,  Ewen  &  Co. 
November  22,  1878.     Hall,  V.  C. 

THE  plaintiffs  being  merchants  and  manufacturers  of 
ready-made  clothing,  who  placed  on  their  goods  a  trade-mark 
registered  in  England  and  the  colonies,  consisting  of  one  or 
more  royal  crowns,  up  to  the  number  of  six,  the  number  va- 
rying according  to  the  quality  of  the  goods,  from  which  mark 
the  goods  had  acquired  the  name  of  "  Crown  Clothing"  the 
defendants,  who  alleged  that  they  had  long  exported  to  the 
colonies  quantities  of  material  for  clothing  not  made  up  bear- 
ing a  trade-mark  consisting  of  an  imperial  crown  between  two 
standards,  began  to  export  ready-made  clothing  ticketed  with 
that  mark. 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendants  from  selling  or  shipping  ready-made  clothing 
bearing  the  mark  in  question,  or  any  other  mark  infringing 
the  plaintiffs'  rights,  on  the  ground  that,  although  the  mark 
might  not  deceive  if  placed  side  by  side  with  the  plaintiffs' 
mark,  it  was  calculated  to  obtain  for  the  defendants'  goods 

364 


WELDON  V.  DICKS. 


the  same  name  as  that  by  which  the  plaintiffs'  were  known, 
and  to  deceive  an  ordinary  purchaser  who  had  not  an  oppor- 
tunity of  comparing  the  marks. 


637.  In  re  Kuhn  &  Co.   [T.  M.  A.  1875]. 

November  29,  1878.     Jessel,  M.  R. 

KUHN  &  Co.  having  obtained  registration  as  their  trade- 
mark of  a  mark  to  be  placed  on  steel  pens  for  the  German 
market,  containing  a  description  of  the  pens  in  German,  with 
a  figure  of  a  steel  pen  : 

On  motion  by  other  manufacturers  of  steel  pens : 
Held,  (1.)  that  the  figure  of  a  steel  pen  was  common  to 
the  trade,  and  could  not  be  exclusively  appropriated,  and  that 
a  note  must  be  appended  to  the  registration  to  the  effect  that 
that  figure  was  not  claimed  per  se,  but  only  in  combination ; 
(2.)  that  Kuhn  &  Co.  must  pay  the  costs  of  the  proceedings, 
notwithstanding  that  the  applicants  had  not  given  them  pre- 
vious notice  of  their  intention  to  take  action  in  the  matter, 
but  that  no  costs  would  have  been  given  if  it  had  been  fur- 
ther proved  that  the  mark  had  only  become  common  by  Kuhn 
&  Co.'s  mark  being  copied  by  English  firms  without  their  per- 
mission, and  that  their  entire  mark  had  been  registered  for  a 
year  and  a  half  before  any  objection  was  made  to  it. 


638.  Weldon  v.  Dicks. 

December  3,  1878.      Malms,  V.  C.  —  10  Ch.  D.  247 ;    39  L.  T.  N.  S. 

467. 

THE  plaintiff  being  the  proprietor  of  the  copyright  in  a 
novel  entitled  "  Trial  and  Triumph,"  first  published  in  1854, 
and  republished  in  1860,  and  since  then  long  out  of  print, 
the  defendant  in  1875  published  a  tale  under  the  same  name 
in  Boiv  Setts,  and  republished  it  in  a  volume,  with  other  tales, 
at  the  end  of  the  same  year,  and  again,  in  a  separate  form, 
in  1877. 

Action  for  an  injunction  to  restrain  the  defendant  from 
infringing  the  plaintiff's  copyright  in  the  title. 

365 


LEVY  V.  WALKER. 

Held,  (1.)  that  the  title  of  the  plaintiff's  book  was  included 
in  the  copyright,  by  which  the  book  was  protected  ;  (2.)  that 
the  fact  that  the  plaintiff's  book  had  been  long  out  of  print 
did  not  deprive  him  of  the  right  to  protection  against  infring- 
ers ;  (3.)  that  the  plaintiff  was  not  disentitled  by  reason  of 
delay,  he  having  commenced  his  action  within  two  months 
after  he  first  became  aware  of  the  assumption  of  the  title  by 
the  defendant ;  (4.)  that  the  injunction  must  be  granted. 

"  There  can  only  be  acquiescence  where  there  is  knowledge.  This 
court  never  binds  parties  by  acquiescence  where  there  is  no  knowl- 
edge, though  it  is  true  that  knowledge  and  acquiescence  is  in  many 
cases  fatal  to  parties." 

639.  Levy  v.  "Walker. 

December  21,  1878  ;  February  5,  1879.  Hall,  V.  C.  —  39  L.  T.  N.  S. 
654.  Ct.  of  App. :  Jessel,  M.  R. ;  James  and  Bramwell,  L.  JJ.  —  10  Ch. 
D.  436;  48  L.  J.  Ch.  273  ;  39  L.  T.  N.  S.  656. 

THE  plaintiff,  Mrs.  Levy,  having  (while  Miss  Charbonnel) 
carried  on  business  in  partnership  with  the  defendant  as  con- 
fectioners, under  the  name  of  " Charbonnel  and  Walker"  on 
the  dissolution  of  the  partnership  and  sale  of  the  business 
under  the  direction  of  the  court,  the  defendant  purchased  the 
entirety  of  the  partnership  business,  leasehold  premises,  stock 
in  trade,  good-will,  etc.,  and  continued  to  carry  on  the  busi- 
ness under  the  old  firm  name. 

On  motion  by  the  plaintiffs  (Mrs.  Levy  and  her  husband) 
for  an  injunction  to  restrain  the  defendant  from  using  the 
old  firm  name,  and  from  representing  that  the  plaintiffs  or 
either  of  them  were  or  was  in  partnership  with  her : 

Held,  on  appeal,  that  the  plaintiffs  were  not  entitled  to 
an  injunction,  on  the  ground  that  neither  of  them  could  be 
subjected  to  any  liability  by  the  use  of  the  name  by  the  de- 
fendant;  and  {per  James,  L.  J.),  that,  in  any  case,  the  sale 
of  the  business  and  good-will  carried  with  it  the  right  to  use 
the  old  firm  name. 

Per  James,  L.  J.     "  The  sole  right  to  restrain  anybody  from  using 

366 


IN  RE  WHITELEY. 

any  name  that  he  likes  in  the  course  of  any  business  he  chooses  to 
carry  on  is  a  right  in  the  nature  of  a  trade-mark.  That  is  to  say, 
somebody  has  a  right  to  say  '  You  must  not  use  a  name,  whether  fic- 
titious or  real,  or  a  description,  whether  true  or  not,  which  is  in- 
tended to  represent,  or  is  calculated  to  represent,  to  the  world  that 
your  business  is  my  business,  and  therefore  deprive  me  by  a  fraudu- 
lent rnisstatement  of  yours  of  the  profits  of  the  business  which  would 
otherwise  come  to  me.'  That  is  the  sole  principle  on  which  the  court 
interferes.  The  court  interferes  solely  for  the  purpose  of  protecting 
the  owner  of  a  trade  or  business  from  a  fraudulent  invasion  of  that 
business  by  somebody  else.  It  does  not  interfere  to  prevent  the  world 
outside  from  being  misled  into  anything. 

"  I  hold  that  the  sale  of  the  good-will  and  business  did  convey 
the  right  to  the  use  of  the  partnership  name  as  a  description  of 
the  articles  sold  in  that  trade,  and  that  that  right  is  an  exclusive 
right  as  against  the  person  who  sold  it,  and  as  against  all  the  world, 
if  any  person  in  that  world  were  representing  himself  as  carrying 
on  the  same  business." 


64O.  The  Army  and  Navy  Cooperative  Society  (Lim- 
ited) v.  The  Junior  Army  and  Navy  Stores  (Lim- 
ited). 

January  17,  1879.    Jessel,  M.  R. 

MOTION  by  the  plaintiffs  for  an  injunction  to  restrain  the 
defendants  from  using  in  their  business  their  name  (as  above), 
or  any  other  name  calculated  to  deceive,  refused,  on  the 
ground  that  the  word  "  Junior  "  prefixed  to  the  defendants' 
title  was  quite  sufficient  to  prevent  deception ;  and  that  in 
any  case  there  could  be  no  mistake,  since  the  only  persons 
admitted  to  deal  with  either  establishment  were  sharehold- 
ers, or  persons  introduced  through  shareholders,  who  would 
not  be  deceived. 


641.  In  re  Whiteley  [T.  M.  A.  1875]. 
February  8, 1879.     Jessel,  M.  R. 

AN  application  having  been  made  by  Whiteley,  a  universal 
provider,  for  the  registration  of  a  trade-mark,  consisting  prin- 

367 


IN  BE  FARINA. 

cipally  of  two  globes,  for  goods  comprised  in  numerous  classes, 
including  classes  11, 12,  and  13  (surgical  instruments,  cutlery, 
metal  implements,  etc.),  which  trade-mark  he  had  used  for 
some  years  on  wrappers,  labels,  bill-heads,  etc.,  and  on  metal 
plates  affixed  to  some  of  the  articles,  the  application  was  op- 
posed as  to  classes  11,  12,  and  13  by  a  firm  of  cutlers,  who  had 
for  many  years  stamped  a  single  globe  on  their  cutlery  and 
metal  goods,  and  had  obtained  registration  of  that  mark  on 
goods  included  in  the  classes  in  question. 

On  adjourned  summons ; 

Held,  that  registration  of  the  applicant's  mark  should  be 
granted  in  the  classes  in  question,  he  giving  an  undertaking 
(of  which  a  note  was  to  be  entered  on  the  register)  not  to 
stamp  or  impress  the  mark  on  any  part  of  the  metal  of  any 
article  in  classes  11,  12,  or  13,  but  to  affix  it  to,  or  use  it  in 
connection  with,  articles  in  those  classes,  in  the  manner  in 
which  it  had  previously  been  affixed  or  used. 


642.  In  re  Farina  [T.  M.  A.  1875].  (2.) 
February  13,  1879.     Hall,  V.  C.  — 27  W.  R.  456. 

J.  M.  FARINA  having  long  used  and  recently  registered 
three  trade-marks  on  Eau  de  Cologne,  consisting  respectively 
of  a  label  with  his  signature,  and  a  seal  in  the  corner,  to  be 
applied  to  the  side  of  the  bottle,  a  circular  stamp  with  three 
parallel  lines  running  from  it,  to  be  applied  to  the  top  and 
neck  of  the  bottle,  and  a  label  consisting  of  a  picture  of  his 
house,  "  G-egenuber  dem  Jiilichs  Platz,"  with  medals  and  let- 
ter-press, to  be  applied  to  the  boxes  containing  the  bottles, 
another  maker  of  Eau  de  Cologne  applied  for  the  registration 
in  his  name  of  three  trade-marks  similarly  composed,  to  be 
used  in  the  same  manner. 

On  motion  by  the  registered  proprietor  for  an  injunction  to 
restrain  the  second  applicant  from  proceeding  with  his  appli- 
cation : 

Held,  (1.)  that  the  trade-marks  were  too  similar  to  those 
already  on  the  register  for  registration  to  be  allowed,  and  that 

368 


IN  RE  RABONE  BROS.  &  CO. 

the  fact  that  the  house  on  the  applicant's  third  mark,  described 
as  "  Gregeniiber  dem  Elogius  Platz"  was  said  to  be  a  correct 
view  of  his  house  in  a  street  turning  out  of  that  square,  did 
not  prevent  his  label  from  being  a  colorable  imitation  of  the 
original,  having  regard  to  the  similarity  in  the  letter-press  and 
the  position  of  the  medals,  though  these  last  were  not  them- 
selves the  same  as  those  in  the  label  registered ;  (2.)  that  the 
applicant's  allegation  that  he  had  used  his  marks  for  several 
years  without  interference  did  not  entitle  him  to  registration, 
since  it  was  not  proved  that  the  original  proprietor  was  aware 
of  such  use  ;  (3.)  that  the  injunction  must  be  granted  as  to 
all  three  marks,  notwithstanding  that  the  German  Court  of 
Appeal,  differing  from  the  Court  of  First  Instance,  had,  while 
prohibiting  the  registration  in  Germany  of  the  label  with  the 
signature,  permitted  that  of  the  label  with  the  house,  the 
question  of  resemblance  being  purely  one  of  fact,  as  to  which 
the  German  decisions  were  to  be  merely  regarded  aa  opposite 
verdicts  by  two  special  juries. 

643.  In  re  Rabone  Bros.  &  Co.  [T.  M.  A.  1875.] 
In  re  Burys  &  Co.  (Limited). 

February  15,  1879.    Jessel,  M.  R. 

RABONE  BROS.  &  Co.  having  long  used  a  trade-mark  con- 
sisting of  a  lion  couchant,  with  their  trade  name,  upon  iron 
bars,  sheets,  and  hoops  (included  in  class  5),  and  upon  a  large 
variety  of  cutlery,  edge  tools,  and  other  implements  (included 
in  classes  12  and  13),  applied  for  the  registration  of  their 
trade-mark  in  classes  5,  12,  and  13.  Burys  &  Co.  having 
long  used  a  trade-mark  consisting  of  a  lion  couchant,  with  or 
without  their  trade  name  or  other  additions,  upon  steel  (in- 
cluded in  class  5),  and  upon  edge  tools,  files,  and  other  goods 
(included  in  classes  12  and  13),  also  applied  for  the  registra- 
tion of  their  trade-marks  in  classes  5,  12,  and  13.  Each  ap- 
plication was  opposed  by  the  other  applicants. 

On  adjourned  summonses  : 

Held,  (1.)  that  both  parties  should  be  registered  in  class  5, 
24  369 


IN  RE  HARGEEAVES. 

for  the  goods  respectively  specified  only  ;  (2.)  that  since  Ra- 
bone  Bros.  &  Co.'s  trade  had  been  mostly  confined  to  the  colo- 
nies, both  parties  should  be  registered  in  classes  12  and  13, 
upon  an  undertaking  being  given  by  Rabone  Bros.  &  Co.  not 
to  use  their  mark  in  Europe,  and  an  undertaking  by  Burys  & 
Co.  not  to  use  theirs  in  Australia,  Tasmania,  New  Zealand,  the 
West  Indies,  or  British  Columbia,  a  note  of  each  undertaking 
to  be  entered  on  the  register  ;  (3.)  that  inasmuch  as  Burys  & 
Co.'s  marks  were  cutlers'  corporate  marks,  which  had  been  as- 
signed to  them  by  one  John  Bedford,  but  had  not  been  sur- 
rendered by  him  to  the  Cutlers'  Company,  or  reassigned  by 
the  company  to  Burys  &  Co.,  without  which  Burys  &  Co.'s 
title  was  not  recognized  by  the  company,  the  registration  of 
their  marks  must  be  deferred  until  their  title  was  perfected. 


644.  Spratt's  Patent  v.  Ward  &  Co. 

February  27,  1879.     Bacon,  V.  C.  —  40  L.  T.  N.  S.  250;  27  W.  R.  470. 

ACTION  for  an  injunction  to  restrain  the  defendants  from 
selling  dog-biscuits  under  the  name  of  " Fibrine  Dog  Cakes" 
or  any  other  title  intimating  that  their  biscuits  were  manu- 
factured under  Spratt's  patent,  the  property  of  the  plaintiffs. 
Notice  having  been  given  by  the  defendants  that  they  required 
the  action  to  be  tried  before  a  judge  and  special  jury,  on  ad- 
journed summons  taken  out  by  the  plaintiffs  for  the  trial  to 
be  before  the  judge  himself  : 

Held,  that  there  being  questions  involved  beyond  a  mere 
simple  issue  of  fact,  an  order  must  be  made  on  the  summons, 
as  asked. 


645.  In  re  Hargreaves  [T.  M.  A.  1875]. 

February  27,  1879.     Hall,  V.  C.  —  27  W.  R.  450. 

ON  motion  for  leave  to  register  a  new  trade-mark  consist- 
ing of  an  anchor  with  the  words  "Anchor  Brand"  for  bacon 
and  ham,  being  goods  included  in  class  42,  in  which  class 
there  were  already  four  marks  registered  in  which  an  anchor 

370 


ORR  EWING  &  CO.  V.  JOHNSTON  &  CO. 

was  a  conspicuous  feature,  such  four  marks  being  used,  not 
for  bacon  and  ham,  but  for  butter,  dog-biscuit,  preserved  fish 
and  meat,  and  cattle  food,  respectively,  all  of  which  came 
within  class  42  : 

Held,  that  leave  would  not  be  given  to  register  the  mark 
in  question,  being  a  new  mark  for  part  of  a  class,  nor  at 
all,  there  being  more  than  three  similar  marks  already  on 
the  register. 

646.  Orr  Ewing  &  Co.  v.  Johnston  &  Co. 
March  15,  1879.      Chanc.  Div. :  Fry,  J.  —  40  L.  T.  N.  S.  307  ;  27  W.  R. 

THE  plaintiffs  being  manufacturers  and  exporters  to  the 
Indian  markets  of  Turkey  red  yarn,  on  which  they  had  long 
placed  a  triangular  ticket  or  label,  in  green  and  gold,  on  which 
a  conspicuous  feature  was  two  elephants  supporting  a  banner 
with  an  inscription,  with  a  crown  between  the  elephants,  the 
defendants,  who  had  for  some  years  exported  other  goods  to 
India,  with  a  ticket  bearing  a  figure  of  the  elephant-headed 
Hindoo  goddess  Gunputty,  began  to  export  Turkey  red  yarn, 
and  to  place  upon  it  a  ticket  of  a  similar  shape  and  in  sim- 
ilar colors  to  the  plaintiffs'  (the  shape  and  colors  being  com- 
mon to  the  trade),  and  having  upon  it  two  different  elephants 
supporting  a  banner  with  an  inscription,  with  the  figure  of 
Gunputty  between  the  elephants  in  place  of  the  crown.  The 
plaintiffs'  ticket  was  proved  to  have  acquired  a  variety  of 
names  in  India,  among  which  was  the  name  "  Bhe  Hathi"  or 
"  Two  Elephant  "  ticket.  Registration  had  been  refused  to 
this  ticket  (In  re  Orr  Ewing  £  (70.),  on  the  ground  that  ele- 
phants were  common  to  the  trade. 

Action  by  the  plaintiffs  for  an  injunction  to  restrain  the  de- 
fendants from  infringing  their  rights. 

Held,  (1.)  that  though  it  was  not  probable  that  English 
purchasers  or  Indian  dealers  would  be  deceived,  it  was  not  im- 
probable that  the  ultimate  purchasers  in  India  would  be,  in 
consequence  of  the  defendants'  ticket  being  calculated  to  ob- 
tain the  same  name  of  "  Bhe  Hathi "  as  the  plaintiffs' ;  (2.) 

371 


OEK  EWING  &  CO.  V.  JOHNSTON  &  CO. 


that  it  was  not  necessary  to  prove  any  fraudulent  intention  on 
the  part  of  the  defendants  ;  (3.)  that  the  fact  that  a  variety  of 
names  had  become  attached  to  the  plaintiffs'  ticket  and  goods 
did  not  destroy  their  right  to  protection  for  the  mark,  where 
one  of  those  names  was  likely  to  be  attributed  to  the  defend- 
ants' ticket  and  goods ;  (4.)  that  the  two  elephants,  forming 
a  material  and  substantial  part  of  the  plaintiffs'  trade-mark, 
having  been  taken  by  the  defendants,  the  burden  was  upon 
them  to  disprove  the  probability  of  deception,  not  upon  the 
plaintiffs  to  prove  it ;  (5.)  that  the  two  elephants  were  not 
established  to  be  common  to  the  trade,  since,  though  a  num- 
ber of  other  tickets  bearing  those  animals  were  produced,  it 
was  not  shown  that  they  had  been  used  or  known  ;  (6.)  that 
the  rights  of  the  plaintiffs  in  their  mark  were  not  affected 
by  the  refusal  to  register,  and  that  the  injunction  must  be 
granted.1 


1  The  court  said  :  "  Having  de- 
scribed the  tickets,  I  repeat  the  ques- 
tion, Should  I  be  deceived  so  as  to  take 
the  one  ticket  for  the  other,  even  if  the 
two  tickets  were  not  before  me,  sup- 
posing me  to  be  a  purchaser  of  ordi- 
nary caution  and  ordinary  intelligence  ? 
I  answer  I  should  not,  and  for  this 
reason,  that  the  two  tickets  certainly 
do  not  impress  the  eye  throughout  as 
being  the  same.  There  is  a  great  sim- 
ilarity, undoubtedly;  but  more  than 
that,  I  am  bound  to  observe  in  the  one 
there  is  a  name  I  can  read,  and  in  the 
other  there  is  a  name  which  I  cannot 
read,  therefore  there  is  a  very  strong 
difference  between  them.  I  can  under- 
stand from  whom  the  one  emanated, 
but  I  cannot  tell  from  whom  the  other 
came.  I  can  read  the  place  of  manu- 
facture upon  both,  and  I  can  see  they 
are  different ;  and  further  than  that, 
that  the  plaintiffs  always  used  this  green 
ticket  with  a  trade-mark,  which  trade- 
mark the  defendants  have  not  imitated, 
and  to  which  trade-mark  they  have 
challenged  the  attention  of  the  reader 
by  marking  it  as  their  trade-mark. 


That  question,  therefore,  I  should  have 
to  answer  in  the  negative. 

"But  then  arises  the  second  question, 
Have  the  defendants  taken  a  material 
and  substantial  part  of  the  plaintiffs' 
ticket  ?  For  this  purpose  it  seems  to 
me  immaterial  to  consider  whether  the 
ticket  is  justly  entitled  to  be  called  a 
trade-mark  strictly  or  not,  for  the  rea- 
sons which  appear  in  the  course  of  what 
I  am  about  to  say.  Before  I  can  an- 
swer the  question  as  to  materiality  of 
the  parts  taken  I  must  have  regard  to 
two  things.  In  the  first  place,  I  must 
look  at  the  tickets  and  inquire  whether 
a  large  part  which  impresses  the  eye 
has  been  taken,  whether  a  significant 
characteristic  of  the  ticket  has  been 
taken ;  and  I  answer  that  it  has.  I 
find  that  the  two  elephants  in  the  two 
top  corners  of  the  plaintiffs'  triangular 
ticket  are  repeated  by  two  elephants  in 
the  two  top  corners  of  the  defendants' 
ticket.  It  is  quite  true  that  the  ele- 
phants are  in  a  different  position;  one 
set  of  elephants  have  howdahs  upon 
them,  and  the  others  have  not,  and  the 
trunks  are  turned  in  different  direc- 


372 


IN  RE  ROTHERHAM. 


647.  In  re  Rotherham  [T.  M.  A.  1875]. 
March,  27,  1879.     Bacon,  V.  C.  —  27  W.  R.  503. 

MESSRS.  ROTHERHAM  &  SONS,  of  Coventry,  having  long 
manufactured  watches  and  exported  them  to  Messrs.  Tod  & 

tions  ;  but  still  in  each  corner  there  is 
an  elephant  that  impresses  the  eye  with 
a  considerable  amount  of  similarity. 
Then,  I  must  next  inquire  the  mode  in 
which  the  plaintiffs'  goods  have  been 
accustomed  to  be  sold,  and  what  people 
have  called  those  goods An- 
other argument  has  been  addressed  to 
me  which  requires  attention.  It  is  this  : 
It  has  been  proved  that  the  name  '  Bhe 
Hathi '  is  not  the  sole  name  which  has 
been  used  for  the  plaintiffs'  goods  in 
the  Bombay  market.  His  goods  are 
known  as  '  Hathi '  yarn,  '  Bhe  Hathi,' 
'  Asul  Graham,'  and  various  names; 
and  it  is  argued  that  where  goods 
bear  a  number  of  names  another  man- 
ufacturer may  introduce  a  trade-mark, 
and  may  appropriate  to  himself  one 
of  those  names,  though  he  could  not 
do  that  if  the  goods  bore  one  name 
only.  In  my  opinion,  no  such  argu- 
ment ought  to  prevail  for  a  moment. 
If  goods  are  sold  in  the  market  as  A.  or 
B.  by  a  particular  maker,  in  my  judg- 
ment no  rival  manufacturer  has  the 
right  to  appropriate  to  himself  either 
the  name  A.  or  B.  Therefore  that  does 
not  in  any  way  shake  the  conclusion 
which  I  have  come  to.  Now,  having 
arrived  at  the  conclusion  that  the  goods 
of  the  plaintiffs  which  bore  the  trade- 
mark in  question  were  known  as  the 
'  Two  Elephants  '  or  '  Bhe  Hathi ' 
goods,  it  follows,  in  my  judgment,  that 
two  elephants  were  a  material  and  sub- 
stantial part  of  the  plaintiffs'  ticket, 
because  they  were  that  part  of  the 
ticket  which  communicated  this  name 
to  the  goods.  Lord  Westbury,  in  the 
case  to  which  my  attention  has  been 
drawn  (Edelsten  v.  Edelsten,  ubi  su- 
pra), observed  upon  the  fact  that  the 


goods  derived  their  trade  name  from 
that  particular  part  of  the  ticket.  I 
think,  therefore,  that  where  the  defend- 
ants did  take  these  two  elephants  they 
took  that  which  was  a  material  and 
substantial  part  of  the  plaintiffs'  ticket. 
Now,  what  is  the  result  of  that  ?  It 
appears  to  me  that  the  result  of  that  is 
this,  to  throw  upon  the  defendants  the 
burden  of  proving  that  their  ticket  did 
not  deceive  purchasers,  so  that  they 
should  believe  that  the  defendants' 
goods  were  the  plaintiffs'  goods.  In 
the  case  of  Ford  \.  Forster,  James,  L. 
J.,  makes  this  observation  :  '  The  plain- 
tiff makes  this  prima  fade  case,  that  he 
has  a  plain  trade-mark,  a  material  and 
substantial  part  of  which  has  been  taken 
by  the  defendants.  Then  the  onus  is, 
under  those  circumstances,  cast  upon 
the  defendants  to  relieve  themselves 
from  that  prima  facie  liability.'  It  ap- 
pears to  me  to  be  in  accordance  with 
the  view  of  the  Lord  Justice  that  Lord 
O'Hagan  made  the  observations  in  the 
case  of  The  Singer  Machine  Manufact- 
uring Company  v.  Wilson,  in  the  House 
of  Lords  (p.  395),  to  which  my  attention 
has  been  drawn  this  morning  :  '  If  one 
man  will  use  a  name  the  use  of  which 
has  been  validly  appropriated  by  an- 
other, he  ought  to  use  it  under  such 
circumstances  and  with  such  sufficient 
precautions  that  the  reasonable  proba- 
bility of  error  should  be  avoided,  not- 
withstanding the  want  of  care  and  cau- 
tion which  is  so  commonly  exhibited  in 
the  course  of  human  affairs.  I  do  not 
say  that  the  mere  possibility  of  decep- 
tion should  suffice  to  make  appropria- 
tion improper,  but  the  chance  of  mis- 
leading should  be  jealously  estimated 
with  a  view  to  this  consideration,  even 


373 


IN  RE  ROTHERHAM. 

Co.,  of  Alexandria,  by  whom  they  were  sold,  such  watches 
bearing  on  the  dial  the  word  "  Tod"  in  Arabic  characters 
(and  that  word,  when  treated  as  an  Arabic  substantive,  de- 
noting "  a  high  mountain  "),  applied  for  the  registration  of 
that  Arabic  word  as  their  trade-mark,  but  registration  was  re- 


though  ordinary  attention  might  have 
been  enough  to  protect  from  mistake.' 
"  It  appears  to  me  that  I  ought, 
therefore,  to  hold  that,  if  one  man  will 
appropriate  to  himself  a  material  and 
substantial  part  of  the  ticket  of  another 
man,  which  has  been  used  for  the  pur- 
pose of  indicating  his  goods,  he  ought 
so  to  appropriate  it  with  such  precau- 
tions, that  reasonable  probability  of 
error  should  be  avoided,  and  therefore 
I  proceed  to  inquire  whether  the  de- 
fendants have  in  this  case  so  appropri- 
ated that  material  part,  which  I  hold 
that  they  have  appropriated,  with  those 
due  precautions  to  prevent  error.  Now, 
it  strikes  one  at  first,  in  considering  and 
answering  that  question,  that  the  de- 
fendants have  thought  fit  to  print  the 
name  of  their  firm  upon  the  ticket  B. 
in  a  language  which  would  be  read  un- 
doubtedly by  the  original  purchasers  of 
the  goods,  but  which  will  not  be  read 
by  the  ultimate  purchasers  in  the  In- 
dian markets,  and  therefore  the  pro- 
tection which  would  be  given  by  a  name 
capable  of  being  read  wherever  the 
goods  go  is  not  afforded  by  their  tick- 
et. To  explain  that,  it  is  necessary  I 
should  observe  that,  according  to  the 
evidence  before  me  at  present,  when 
those  goods  reach  Bombay  they  pass 
generally  into  the  hands  of  merchants 
dealing  in  a  wholesale  manner ;  that 
they  are  then  distributed  through  the 
intervention  of  a  series  of  middle-men ; 
and  Mr.  Dick  has  explained  clearly  that 
there  are  numerous  classes  of  middle- 
men employed  in  the  distribution  of 
these  goods  over  the  country.  Now, 
the  first  class  of  customers  would  prob- 
ably, in  my  judgment,  not  be  deceived  ; 
but  I  think,  upon  the  whole  of  the  evi- 


dence before  me,  that  there  is  a  strong 
probability  that  the  ultimate  purchas- 
ers, the  weavers  who  buy  these  goods 
in  the  villages,  probably  also  the  retail 
dealers  who  sell  to  them,  would  be  de- 
ceived by  the  defendants'  ticket,  and 
the  grounds  upon  which  I  have  arrived 
at  that  conclusion  are  put  as  forcibly  as 
they  can  be  by  Goolalehund,  who  is 
a  dealer  in  English  yarn  in  Bombay, 
who  says  that  in  his  opinion  the  native 
buyers  would  be  deceived  because  they 
would  ask  for  '  Bhe  Hathi,  and  there,' 
he  continued,  referring  I  understand  to 
the  defendants'  ticket,  '  are  Bhe'  Ha- 
thi.' It  appears  to  me  that  there  is  a 
great  deal  of  evidence  to  which  I  attach 
weight  to  show  that  these  goods  are 
sold  largely  by  name,  and  that,  although 
the  first  dealers  no  doubt  look  at  the 
tickets,  and  the  brokers  in  Bombay 
probably  look  at  the  tickets,  yet  that 
the  ultimate  purchasers  and  the  pur- 
chasers from  the  dealers  in  Bombay 
probably  do  not  look  at  the  tickets,  and 
at  any  rate  are  liable  to  be  deceived  by 
the  name  by  which  the  goods  are  sold. 
In  coming  to  that  conclusion,  I  do  not 
forget  that  there  is  a  conflict  of  evi- 
dence upon  the  point ;  that  there  are 
those  who  say  that  native  buyers  will 
not  be  deceived,  and  there  are  many 
who  say  that  the  ticket  would  be  known 
as  the  Gun  putty  ticket;  that  there  are 
those  who  say  that  the  goods  exported 
by  the  defendants  have  received  the 
name  of  the  Gunputty ;  but  it  seems  to 
me  that  the  burden  resting,  as  I  hold 
that  it  does,  on  the  defendants  to  show 
that  they  have  used  all  due  precaution 
to  prevent  deception  and  error,  they 
have  failed  to  discharge  that  burden." 


374 


GILLESPIE  &  CO.  V.  MAESHALL. 

fused  by  the  registrar,  on  the  ground  that  he  was  instructed 
by  the  Commissioners  of  Patents  not  to  register  words  in  for- 
eign languages. 

On  motion  by  the  applicants,  Held ,  that  the  direction  given 
by  the  commissioners  was  contrary  to  the  act  and  ultra  vires, 
and  that  the  registration  must  proceed. 


648.  Gillespie  &  Co.  v.  Marshall. 
April  7,  1879.     Ct.  of  App. :  Brett,  Cotton,  and  Thesiger,  L.  JJ. 

THE  plaintiffs,  agents  for  a  Canadian  firm,  contracted  with 
the  defendant,  a  sheet-iron  manufacturer,  to  purchase  from 
him  a  quantity  of  "  Marshall's  Canada  Plates"  The  term 
"Canada  Plates"  was  proved  to  have  come  within  the  pre- 
vious twelve  years  to  mean  plates  of  iron  for  roofing  purposes, 
rolled  in  a  particular  manner  with  respect  to  grain,  and  to 
be  usually  made  by  tin-plate  makers.  Formerly  "  Canada 
Plates "  were  mere  plates  of  sheet-iron  cut  irrespective  of 
grain,  and  the  defendant,  who  had  occasionally  supplied  such 
plates,  and  on  one  occasion  to  the  plaintiffs  themselves,  under 
the  name  and  mark  of  "Marshall's  Canada  Plates,"  now  sup- 
plied the  same  article  to  the  plaintiffs,  by  whom  the  plates 
were  shipped  to  their  principals  in  Canada.  The  latter  ob- 
jected to  the  quality,  and  resold  them  at  a  loss. 

Action  by  the  plaintiffs  to  recover  the  amount  of  the  loss  on 
the  resale. 

The  jury  having  found  at  the  trial —  (1.)  that  the  contract 
was  for  Canada  plates  as  made  by  Marshall ;  (2.)  that  the 
plates  were  reasonably  merchantable ;  (3.)  that  the  goods 
were  not  in  the  commercial  sense  "  Canada  plates ;  "  on  which 
verdict  judgment  was  entered  for  the  defendant : 

Held,  on  appeal,  by  Brett  and  Thesiger,  L.  JJ.,  that  the 
contract  was  for  the  goods  usually  supplied  by  the  defendant 
under  the  name  of  ''Marshall's  Canada  Plates,"  that  the  de- 
fendant was  justified  in  supplying  those  goods,  and  that  the 
judgment  must  stand. 

Held,  by  Cotton,  L.  J.,  that  the  contract  was  for  "  Canada 

375 


IN   BE   BREBNER. 


Plates"  in  the  commercial  sense,  to  be  of  Marshall's  manu- 
facture, there  being  no  evidence  to  show  that  "  Marshall's  " 
plates  had  a  different  meaning  in  the  market,  and  that  the 
plaintiffs  were  entitled  to  judgment. 


649.  In  re  Brebner. 

April  30,  1863.     Victoria  Sup.  Ct. :  Molesworth,  J.  —  2  W.  If  W.  (1.  E.  fr 

•If.)  12. 

ON  appeal  from  a  decision  of  the  Geelong  District  Commis- 
sioner of  Insolvent  Estates,  by  which  the  appellant,  an  insol- 
vent, was  refused  his  certificate  on  various  grounds,  among 
which  was  one  that  he  had  squandered  his  means  in  litigation, 
he  having  infringed  a  trade-mark  used  by  other  persons  on 
flour,  which  led  to  a  litigation,  which  he  had  to  compromise 
at  considerable  expense. 

Held,  that  the  certificate  should  be  suspended  for  a  year, 
but  not  refused. 

"  The  last  ground  of  objection  is  the  general  conduct  of  the  insol- 
vent, and  under  this  head  comes  the  imputation  against  him  of  having 
imitated  the  brands  or  trade-marks  of  another  person.  I  must  regard 
this  as  a  great  dishonesty.  It  is  depriving  another  man  of  the  benefit 
of  his  good  name.  He  is  fairly  entitled  to  the  benefit  of  the  repute 
which  he  has  obtained  for  personal  skill  and  honesty,  or  the  good 
quality  of  his  produce ;  and  another  person  who  deprives  him  of 
that  robs  him  of  his  own.  Such  person,  indeed,  not  only  takes  that 
which  does  not  belong  to  him,  but  risks  the  loss  by  the  true  owner 
of  his  good  repute  altogether,  when  an  inferior  article  is  substituted 
for  the  genuine  one.  It  is  also  a  fraud  on  the  purchaser.  Whether 
he  rightly  or  wrongly  thinks  an  article  produced  by  a  particular  per- 
son to  be  a  superior  one,  he  is  cheated  if  an  article  made  by  another 
person  is  substituted.  It  is  no  answer  to  say  to  the  purchaser,  '  I 
gave  you  an  article  substantially  as  good  as  that  which  is  represented ; ' 
he  would  not  have  given  his  money  at  all  if  he  had  known  the  article 
was  made  by  another  person.  If  a  man  wants  an  article  of  oak,  and 
gets  an  article  of  deal,  and  pays  an  oak  price,  it  is  no  answer  to  say 
that  deal  will  do  as  well.  A  fraud  of  this  sort  must  also  have  been 
accompanied  with  a  great  deal  of  deliberation  and  contrivance  ;  there 

376 


HENNESSY  V.  WHITE. 

must  have  been  combination  and  systematic  continuous  action  re- 
solved upon  and  carried  out." 


65O.  Hennessy  v.  White. 

April5,  September  2,  1869.     Victoria  Sup.    Ct.:  Molesworth,  J.  —  6  W. 
W.  fr  A'B.  Eq.  216.     Victoria  Sup.   Ct. :  6  W.  W.  &  A'B.  Eq.  221. 

THE  plaintiffs  being  brandy  merchants,  of  Cognac,  who  sold 
their  brandy  in  cask  and  in  bottle,  the  latter  being  of  the  bet- 
ter quality,  and  who  placed  on  their  bottles  certain  distinctive 
labels,  corks,  and  capsules,  the  defendants  purchased  a  large 
quantity  of  the  plaintiffs'  inferior  or  cask  brandy,  and  sold  it 
in  bottles  bearing  labels,  corks,  and  capsules  of  a  similar 
shape,  color,  and  design  to  the  plaintiffs',  except  that  instead 
of  " Jas.  Hennessy  $  Co.,  Cognac"  on  the  plaintiffs'  labels, 
corks,  and  capsules,  the  defendants'  had  '•'•Jas.  Hennessy  $• 
Co.'s  Cognac  ;  "  that  instead  of  an  arm  with  a  battle-axe  on 
the  plaintiffs'  they  had  a  spread  eagle ;  and  that  the  defend- 
ants' labels  also  had  in  small  letters  the  words  "  Bottled  by 
T.  $•  W.  White,  Melbourne.'11  And  there  were  some  minor 
differences. 

On  motion  by  the  plaintiffs: 

Injunction  granted  to  restrain  the  defendants  from  infring- 
ing the  plaintiffs'  rights. 

Per  Molesworth,  J.  "  According  to  the  authorities,  an  intention 
to  produce  a  mistake  is  sufficient  to  warrant  the  interference  of  this 
court  by  injunction.  According  to  the  authorities,  also,  it  is  not 
necessary  that  the  intention  should  be  to  deceive  persons  who  care- 
fully examine.  It  is  enough  that  there  are  a  class  of  customers  who 
examine  so  carelessly  that  they  would  be  deceived  by  the  resemblance 
between  the  two." 

"  I  think  a  new  feature  which  has  not  been  present  in  any  other 
case,  and  is,  therefore,  not  touched  by  the  language  of  the  other  cases, 
is  one  which  I  ought  to  act  upon  here ;  that  is,  that  the  makers  of 
articles  of  different  qualities  are  entitled  to  brand  their  best  article  in 

a  particular  way,  to  show  the  superior  value  they  put  upon  it 

I  put  this  case  upon  the  particular  ground,  that  an  article  of  Hen- 
nessy &  Co.'s  manufacture  of  a  higher  quality  has  had  a  particular 

377 


HENNESSY  v.  HOGAN. 

mark  used  for  it,  and  that  the  defendants'  brand  is  an  attempt  to  de- 
ceive, probably  not  the  direct  purchaser  of  the  article,  but  the  ulti- 
mate consumer." 

Per  Stawell,  C.  J.  "  If  a  brandy  different  from  that  which  the 
manufacturer  bottled  is  put  into  bottles  and  sold  as  the  manufacturer's 
bottled  brandy,  the  fact  that  it  is  the  manufacturer's  bulk  brandy 
does  not  make  the  sale  less  an  imposition." 

"  We  were  invited  to  consider  the  arm  and  battle-axe  on  the  re- 
spondents' label  as  their  trade-mark,  and,  because  it  was  not  adopted 
by  the  appellant,  to  disregard  all  other  matters  as  of  no  importance  ; 
but  this  is  precisely  the  course  which  the  courts  have  carefully  avoided, 
namely,  selecting  any  one  or  more  matters,  either  of  resemblance  or 
difference,  and  considering  them  essential,  or  attempting  to  define 
a  priori  what  might  or  might  not  constitute  an  improper  imitation 
by  one  person  of  the  manufacture  of  another,  for  such  a  course  would 
manifestly  offer  inducements  for  fraud ;  persons  so  disposed  would 
then  endeavor  to  avoid  the  one  or  more  objectionable  points,  but 
yet  so  present  the  particular  article  for  sale  as  to  impose  on  the  un- 
wary, who  accept  as  sufficient  proof  of  genuineness  a  resemblance  in 
the  main,  without  closely  examining  details.  An  imitation  of  the 
trade-mark  would,  no  doubt,  render  the  case  still  stronger  against  the 
appellant ;  but  the  mere  substitution  of  one  mark  for  another,  both 
being  in  the  same  position  and  of  the  same  color,  does  not,  in  our 
opinion,  neutralize  the  effect  of  all  the  other  points  of  resemblance." 


651.  Hennessy  v.  Hogan. 

April  29,  1869.     Victoria  Sup.  Ct.:  Molesworth,  J.  —  QW.    W.   Sf  A'B. 

Eq.  225. 

THE  plaintiffs  being  brandy  merchants,  of  Cognac,  who  sold 
their  brandy  in  cask  and  in  bottle,  the  latter  being  of  the  bet- 
ter quality,  and  who  placed  on  their  bottles  certain  distinctive 
labels,  corks,  and  capsules,  the  defendants  purchased  a  quan- 
tity of  the  plaintiffs'  inferior  or  cask  brandy,  and  sold  it  in 
bottles  bearing  labels,  corks,  and  capsules  of  a  similar  shape, 
color,  and  design  to  the  plaintiffs',  except  that  the  name  of  the 
plaintiffs  did  not  appear  on  the  defendants'  corks  and  cap- 
sules ;  that  the  defendants  used  the  device  of  an  arm  holding 
a  dart,  instead  of  an  arm  holding  a  battle-axe ;  and  that  the 

378 


WOLFE  V.  HART. 

defendants  placed  on  their  labels,  in  bold  type,  the  words 
"  Bottled  by  Hogan,  Money  £  Co" 

On  motion  by  the  plaintiffs  : 

Injunction  granted  to  restrain  the  defendants  from  infring- 
ing the  plaintiffs'  rights. 

"  It  is  not  necessary  that  the  imitation  should  be  such  as  to  deceive 
a  person  accurately  scrutinizing  it.  It  is  sufficient  if  it  is  done  with 
the  intention  of  deceiving  any  class  of  purchasers,  or  to  enable  sub- 
vendees  to  make  the  article  in  question  more  attractive." 

652.  Hostetter  v.  Anderson. 

February  17,   1870.     Victoria  Sup.  Ct.:  Molesworth,  J.  —  l  V.  R.  (1  W. 
A'B.lf  W.)Eq.7;  1  A.J.  4. 

THE  plaintiffs  being  American  manufacturers  of  bitters, 
which  they  sold  in  bottles  having  the  words  "Dr.  J.  Hostet- 
ter's  Stomach  Bitters  "  moulded  in  them,  and  labelled  with 
the  words  "  Hostetter 's  Celebrated  Stomach  Bitters"  the  de- 
fendants bought  up  a  considerable  quantity  of  the  plaintiffs' 
moulded  bottles,  and  sold  them  refilled  with  other  bitters,  and 
labelled  "  Celebrated  Stomach  Bitters"  but  the  labels  did  not 
in  form  or  color  resemble  those  used  by  the  plaintiffs. 

On  motion  by  the  plaintiffs  injunction  granted  to  restrain 
the  defendants  from  infringing  the  plaintiffs'  rights. 


653.  Wolfe  v.  Hart. 

July  8,  September  19,  1878.     Victoria  Sup.  Ct.:  Molesworth,  J.  —  4  Viet. 
L.  R.  Eg.  125.     Victoria  fry.  Ct.  —  ±  Viet.  L.  R.Eq.  134. 

THE  plaintiff  selling  gin  under  the  name  of  "  Udolpho 
Wolfe's  Aromatic  Schiedam  Schnapps"  in  square  moulded 
bottles,  enclosed  in  wrappers  bearing  inscriptions  in  blue  and 
red  inks,  the  defendant,  a  former  agent  for  the  plaintiff,  began 
to  sell  gin  under  the  name  of  "  Hart's  Imperial  Schiedam 
Schnapps"  or  "  Imperial  Schiedam  Aromatic  Schnapps,"  and 
to  sell  them  in  somewhat  similar  bottles,  enclosed  in  somewhat 
similar  wrappers  to  the  plaintiff's. 

379 


IN  BE  FARINA. 

On  motion  by  the  plaintiff  for  an  injunction  to  restrain  the 
defendant  from  infringing  the  plaintiff's  rights : 

Held,  by  Molesworth,  J.,  that  the  words  "  Aromatic  Schie- 
dam Schnapps  "  were  descriptive  and  incapable  of  appropria- 
tion, but  that  the  bottles  and  wrappers  were  intended  and 
calculated  to  deceive,  and  that  an  injunction  must  be  granted 
in  that  respect. 

Held,  on  appeal  to  the  full  court,  that  the  injunction  must 
be  affirmed  as  granted. 

Per  Stawell,  C.  J.  "  Nor  do  I  concur  in  the  argument  that  we  are 
to  consider  the  intelligence  or  want  of  intelligence  of  the  purchaser. 
We  ought  not  to  pronounce  a  decision  which  would  be  applicable  to 
the  one  and  inapplicable  to  the  other,  or  ignore  an  uneducated  and 
illiterate  person,  who  may  desire  to  ascertain  whether  the  article  he 
is  about  to  purchase  is  the  same  he  has  had  before.  We  are  to  con- 
sider whether  the  infringement  of  the  plaintiff  s  rights  has  been  proved, 
not  by  taking  particular  isolated  points,  but  by  looking  at  the  general 
resemblance  of  the  packages,  labels,  bottles,  and  other  points." 


654.  In  re  Farina  [T.  M.  A.  1875].    (3.) 

April  22,  1879.     Hall,  V.  C. 

J.  M.  FARINA  having  long  used,  and  recently  registered, 
two  trade-marks  on  Eau-de-Cologne,  consisting  respectively 
of  a  label  with  his  signature  and  flourish,  the  words  "  Q-egen- 
ilber  dem  Jillichs  Platz"  and  a  seal  in  the  corner,  to  be  ap- 
plied to  the  side  of  the  bottle,  and  a  label  bearing  a  circular 
seal  with  three  parallel  lines  running  from  it,  to  be  applied  to 
the  top  and  neck  of  the  bottle,  another  manufacturer  used  on 
the  sides  of  his  bottles  a  label  of  similar  appearance  bearing 
the  signature  "  Joseph  Anton  Farina,  Gegeniiber  dem  Central 
Bahnhof,"  with  a  similar  flourish,  and  with  a  similar  seal  in 
the  corner,  and  on  the  tops  and  necks  of  his  bottles  a  label 
with  a  circular  seal  and  three  parallel  lines,  similar  to  J.  M. 
Farina's  second  label,  though  differing  in  some  details.  The 
latter  manufacturer  applied  for  the  registration  of  the  two 
circular  seals  used  respectively  in  the  corner  of  the  first 

380 


ROYAL  BAKING  POWDER  CO.  V.  ROYAL  CHEMICAL  CO. 

label  and   on  the   top  of   the   bottle,  without  other  accom- 
paniments. 

On  motion  by  J.  M.  Farina  for  an  injunction  to  restrain  the 
rival  manufacturer  from  proceeding  with  his  application  for 
registration,  Held,  (1.)  that  the  two  seals  might  be  regis- 
tered, but  only,  as  to  the  first,  with  a  note  that  it  was  not  to 
be  used  with,  or  as  part  of  any  label  similar  to  or  only  color- 
ably  differing  from,  J.  M.  Farina's  first  label ;  and,  as  to  the 
last,  with  a  note  that  it  was  not  to  be  used  upon  the  top  or 
cork  of  any  bottle  of  Eau-de-Cologne,  or  with  or  as  part  of 
any  label  similar  to,  or  only  colorably  differing  from,  J.  M. 
Farina's  second  label ;  (2.)  that  the  applicant  for  registration 
must  pay  the  agreed  costs  of  the  application. 


655.  In  re  Worthington  &  Co. 
May  9,  1879.     Jessel,  M.  R. 

BASS  &  Co.  having  long  used  and  since  registered  as  their 
trade-mark  on  ale  and  beer  (included  in  class  43)  tke  figure 
of  a  triangle,  which  in  practice  was  colored  red,  and  from 
which  the  beer  was  known  as  "  triangle  beer,"  Worthington 
&  Co.  applied  for  the  registration  of  a  new  mark  to  be  used 
on  beer,  wine,  and  spirits  (all  these  articles  being  included  in 
the  same  class,  No.  43,  in  which  Bass  &  Co.'s  mark  was  regis- 
tered), such  new  mark,  consisting  of  a  triangular  device  which 
contained  a  church  in  the  centre,  and  the  words  "  Beccles 
Brewery  —  Established  1830"  in  a  border. 

On  motion  by  Bass  &  Co.  injunction  granted  to  restrain 
Worthington  &  Co.  from  taking  any  further  proceedings  for 
the  purpose  of  obtaining  the  registration  for  which  they  ap- 
plied, on  the  ground  that  the  marks  were  so  similar  as  to 
render  deception  probable. 


656.  Royal  Baking  Powder  Co.  v.  Royal  Chemical  Co. 
1873.     N.  Y.  Superior  Court.     Not  reported. 

THE  plaintiffs  being  manufacturers  of  baking-powder  ap- 
plied the  designation  "  Royal "  to  their  product.     Defendant 

381 


PROCTER  &  GAMBLE  V.  McBRIDE  ET  AL. 

used  its  corporate  name  upon  the  same  class  of  goods,  giving 
a  special  prominence  to  the  word  "  Royal." 

Action  for  an  injunction  and  account. 

Held,  that  the  word  "  Royal"  as  used  by  plaintiff,  was  a 
valid  trade-mark,  that  the  same  had  been  infringed  by  de- 
fendant, and  that  plaintiff  was  entitled  to  an  injunction  as 
prayed  for  with  costs.1 


657.  Procter  &  Gamble  v.  McBride  et  al. 

1875.     C.  C.  U.  S.  N.  D.  Ill  —  IB  U.S.  Pat.  Gaz.  1278. 

THE  report  of  this  case  is  in  the  language  of  Judge  Blod- 
gett  of  the  court  in  which  it  was  decided : 

"  A  suit  was  brought  by  Procter  &  Gamble  against  McBride  &  Co., 
of  this  city,  to  enjoin  the  use  of  a  trade-mark  which  had  been  adopted 
by  Procter  &  Gamble  for  a  certain  brand  of  soap  which  they  manu- 
factured. Procter  &  Gamble  claimed  that  they  had  introduced  to  the 
public,  under  a  trade-mark  of  their  own,  a  brand  of  soap  under  the 
term  ana*  designation  of  '  Mottled  German  Soap,'  and  they  had 
adopted  as  a  trade-mark  upon  their  packages  those  words  with  a  cir- 
cle with  a  moon  and  stars  in  the  middle.  The  defendants,  McBride  & 
Co.,  who  were  manufacturers  in  this  city,  had  put  upon  the  market  a 
brand  of  soap  which  they  termed  '  S.  W.  McBride's  German  Mottled 
Soap,'  and  they  had  marked  these  words  upon  the  outside  of  their  pack- 
ages in  combination  with  a  crescent,  within  which  was  a  single  star 

instead  of  a  number  of  stars The  defendants  departed  widely 

from  the  complainant's  trade-mark.  They  changed  the  arrangement 
of  the  words,  so  instead  of  its  being  '  Mottled  German  Soap '  it  was 
'  German  Mottled  Soap,'  and  instead  of  a  circle  containing  several 
stars  it  was  a  crescent  containing  a  single  star  prefixed  by  the  name 
of  each  maker ;  and  it  was  argued  in  that  case  there  could  be  no  pos- 
sibility of  intelligent  consumers  being  deceived.  So  strong  was  the 
case  made  before  me  on  an  application  for  an  injunction  that  I  refused 

1  In  an  action  by  the  same  plaintiffs  court  against  Jenkins  et  al.,  it  was  held 

against  Sherrill  et  al.,  in  the  N.  Y.  Su-  that  the  word  "  Royalty "  was  an  in- 

preme  Court,  the  word  "  Royal "  was  f ringement  of  "  Royal "  applied  to  bak- 

sustained  as  a  mark  for  flavoring  ex-  ing  powder.     See  R.  B.  P.  Co.  \.  Me- 

tracts   as  against   the  words   "  Royal  Quade,  674. 
Standard; "  and  in  an  action  in  the  same 

382 


SINGER  MANUFACTURING  CO.  V.  LARSEN. 

the  injunction  ;  but  after  the  proofs  were  taken  and  the  case  brought 
to  hearing  before  Judge  Drummond,  he  sustained  the  infringement 
and  ordered  a  perpetual  injunction  against  the  defendants.  It  was 
also  shown  in  that  case  that  "  mottled  German  soap  "  or  "  mottled 
soap '  had  been  in  common  use  in  the  trade  for  nearly  fifty  years,  and 
that '  mottled  soap  '  was  a  commodity  well  known  to  the  trade  ;  but 
Judge  Drummond  sustained  that  trade-mark,  as  the  exclusive  prop- 
erty of  the  complainant,  and  held  that  the  defendants  infringed." 


658.    United   States  v.  Steffens. 

s.  c.  u.  s. 

Held,  that  the  acts  of  Congress  providing  for  the  registra- 
tion of  trade-marks  are  unconstitutional  and  void. 

659.  Singer  Manufacturing  Co.  v.  Larsen. 

1878.     C.  C.  U.  S.  N.  Dist.  III.— Chicago  L.  N.  November  6,  1880. 

Held)  that  the  complainant  could  not  enjoy  an  exclusive 
right  to  the  name  or  designation  "  Singer"  the  same  being 
a  word  descriptive  of  a  particular  kind  of  machine. 

Drummond,  J.  "  As  I  understand  this  case,  I  think  there  can  be 
no  doubt  that  the  plaintiff  cannot  claim  the  exclusive  right  to  manu- 
facture the  '  Singer  Sewing  Machine.'  All  that  it  can  claim  is  to 
make  a  machine  of  its  own  peculiar  manufacture,  with  a  device  so  that 
it  becomes  in  the  nature  of  a  trade-mark.  Otherwise,  after  a  patent 
has  expired  which  has  established  the  nomenclature  of  a  sewing-ma- 
chine, as  the  Howe  patent,  or  the  Wilson  patent,  the  patentee  might 
go  on  and  have  the  benefit  of  the  patent  indefinitely. 

"  On  a  machine  called  '  The  Singer  Sewing-Machine '  there  were 
various  patents.  These  patents  have  all  expired,  and  nothing  can 
therefore  be  claimed  under  them.  Other  persons  cannot  be  prevented 
from  manufacturing  a  machine  like  the  Singer  sewing-machine,  and 
which  may  be  called,  to  distinguish  it  from  other  machines,  '  Singer's 
Sewing-Machine'  If  a  sewing-machine  has  acquired  a  name  which 
designates  a  mechanism  or  a  peculiar  construction,  parts  of  which  are 
protected  by  patents,  other  persons,  after  the  expiration  of  the  pat- 
ents, have  the  right  to  construct  the  machine  and  call  it  by  that  name, 
because  that  only  expresses  the  kind  and  quality  of  the  machine.  I 

383 


SINGER  MANUFACTURING  CO.  V.  LARSEN. 

have  read  the  reports  of  the  case  of  the  Singer  Manufacturing  Com- 
pany v.  Wilson  (477),  ....  and  I  do  not  know  that  I  controvert  the 
general  rule  there  laid  down,  that  there  must  be  something  to  indicate 
that  the  thing  manufactured  is  not  the  same  as  that  of  the  complain- 
ant ;  in  other  words,  to  show  it  is  not  manufactured  by  the  plaintiff. 
That  is,  it  is  a  question  of  manufacture,  not  of  name.  A  person  could 
not  claim  a  right  to  construct  a  peculiar  form  of  barrel  as  to  dimen- 
sions and  capacity,  irrespective  of  any  marks  or  brands  impressed 
upon  it.  That  of  itself  could  not  be  a  lawful  trade-mark.  The  same 
rule  would  be  applicable  to  the  construction  of  a  wagon  or  carriage, 
which,  owing  to  some  peculiarity,  might  possess  a  particular  name  as 
that  of  the  original  manufacturer.  A  man  might  construct  a  wagon 
or  carriage  precisely  like  it,  and  he  would  not  be  liable  if  he  did  not 
claim  in  some  form  that  it  was  constructed  by  the  manufacturer.  The 
only  principle  upon  which  an  action  can  be  sustained  under  such  cir- 
cumstances, as  I  understand,  is  through  a  trade-mark.  If  there  were 
a  valid  trade-mark  called  a  '  Singer  Machine,'  then  there  would  be 
some  force  in  the  plaintiff's  claim.  Here  the  plaintiff  and  the  defend- 
ant have  a  trade-mark  somewhat  similar,  and  if  there  is  on  the  ma- 
chine manufactured  by  the  plaintiff  a  valid  trade-mark  to  indicate 
that  it  is  of  the  plaintiff's  manufacture,  no  one  else  ought  to  be  per- 
mitted to  put  anything  on  his  machine  to  show  that  it  has  been  man- 
ufactured by  the  plaintiff ;  that  is,  to  use  the  same  trade-mark.  It 
may  be  the  defendant  has  made  his  machine  to  imitate  the  plaintiff's, 
and  to  induce  people  to  believe  that  it  is  the  same.  But  as  I  have 
said,  I  do  not  think,  under  the  circumstances  of  this  case,  there  can 
be  a  trade-mark  for  the  name,  '  Singer  Sewing-Machine" 

"  An  illustration  is  furnished  in  the  opinion  of  the  Lord  Chancellor 
in  the  House  of  Lords  in  the  case  already  referred  to.  A  carriage 
called  a  '  brougham  '  had  been  in  very  general  use  for  many  years. 
If  that  were  devised  by  a  man  of  the  same  name,  so  that,  from  its  pe- 
culiarity of  construction  it  was  generally  known  by  that  name,  it  cer- 
tainly cannot  be  claimed  that  the  man  who  devised  it,  or  his  assignees, 
would  have  a  right  to  construct  a  '  brougham '  for  all  time  to  come. 
If  no  patent  existed  upon  it,  or  any  of  its  parts,  any  one  who  has  the 
requisite  skill  could  construct  just  such  a  '  brougham '  as  was  origi- 
nally constructed.  There  could  in  such  a  case  be  no  trade-mark 
which  the  law  would  protect  in  the  name  '  brougham,'  and  I  therefore 
do  not  think  that  the  opinion  of  the  House  of  Lords  can  be  construed 

384 


WAMSUTTA  MILLS  V.  ALLEN. 

to  mean  what  is  claimed  by  the  counsel  of  the  plaintiff  in  this  case. 
So  that,  while  I  hold  that  the  defendant  is  not  prevented  from  con- 
structing a  '  Singer  Sewing- Machine,'  still,  he  cannot  be  permitted  to 
do  any  act  the  necessary  effect  of  which  will  be  to  intimate,  or  to 
make  any  one  believe,  that  the  machine  which  he  constructs  and  sells 
is  manufactured  by  the  plaintiff.  Neither  has  he  the  right  to  use  any 
device  which  may  be  properly  considered  a  trade-mark,  so  as  to 
induce  the  public  to  believe  that  his  machine  has  been  manufactured 
by  the  plaintiff;  and,  therefore,  I  shall  modify  the  injunction  in  this 
case  by  simply  requiring  the  defendant  to  refrain  from  selling  any 
Singer  sewing-machines  manufactured  by  any  person  or  company 
other  than  the  plaintiff,  without  indicating  in  some  distinct  manner 
that  the  said  machines  were  not  manufactured  by  the  Singer  Manu- 
facturing Company."  1 


66O.  Wamsutta  MiUs  v.  Allen. 
1878.     Com.  PL  of  Ph  ila.  —  P.  W.  N. 

COMPLAINANT  alleged  that  it  had  long  been  accustomed  to 
attach  the  name  "  Wamsutta  Mills  "  to  cotton  or  muslin  shirt- 
ings manufactured  by  it,  that  its  goods  had  become  well 
known  as  "  Wamsutta  "  muslins,  that  the  defendants,  dealers 
in  gentlemen's  furnishing  goods,  were  using  the  name  "  Wam- 
yesta "  on  shirts  made  from  muslin  of  an  inferior  quality,  and 
advertising  their  shirts  as  made  of  "  Wamyesta "  muslin, 
whereas  there  was  no  such  brand  of  muslin  known. 

Action  for  injunction  and  account. 

Held,  that  complainant  was  entitled  to  an  injunction  to  re- 
strain the  use  by  defendants  of  the  word  "  Wamyesta  "  on 
shirts  not  made  of  complainant's  goods. 

1  See  Singer  Man.  Co.  v.  Brill.    It     and  still  be  fraudulent  to  use  the  fol- 
cannot  be  disrespectful  to  remark,  that     lowing :  — 
it  is  not  difficult  to  understand  how  it 
might  be  open  to  the  public  to  use  a 


mark  as  follows  :  — 


LARSEN'S  SEWING-MACHINE. 

Made  according  to  the  principle  of  the 
Singer  machine. 

25  ~385 


THE    SINGEE   MACHINE. 

'  This  machine  was  manufactured  by 
Larsen. 


KELLY  V.  BYLES. 

The  Court.  "  It  must  be  obvious  that  the  question  is  not  whether 
experts  would  be  deceived,  but  rather  whether  persons  who  buy  would 
probably  be  deceived  by  the  name  which  the  defendants  have  adopted. 
Upon  this  point  we  are  of  opinion  that  the  resemblance  between  the 
two  words  is  of  a  character  to  deceive  and  mislead  a  certain  class  of 
purchasers  —  those  who  are  acquainted  with  the  reputation  of  the 
Wamsutta  muslin,  but  who  have  little  knowledge  of  the  fabric  itself. 
Such  persons  might  readily  confuse  the  two  names  and  purchase  the 
defendants'  shirts  for  shirts  made  of  the  plaintiffs'  muslin.  '  Wam- 
yesta '  might  well  be  mistaken  by  many  people  for  *  Wamsutta,'  in 
view  of  the  fact  that,  as  appears  by  the  proofs,  there  is  only  one  mus- 
lin manufactured  which  is  known  by  a  name  resembling  that  which 
the  defendants  use.  It  is  difficult  to  conceive  that  the  defendants 
have  adopted  this  name  innocently  or  by  accident.  The  resemblance 
is  strongly  suggestive  of  the  hypothesis  that  the  defendants  have 
adopted  it  because  of  the  facility  with  which  the  two  words  may  be 
confused  in  the  minds  of  a  certain  class  of  purchasers.  I  need  not 
cite  authorities  to  show  that  a  man  may  acquire  property  in  a  trade- 
mark, or  that  having  acquired  it  he  is  entitled  to  the  restraining  proc- 
ess of  a  court  of  equity  to  prevent  the  injury  he  will  experience  by  its 
being  unlawfully  appropriated  or  imitated  by  others 

"  As  to  the  point  made  by  the  defendants  that  the  plaintiffs  are 
manufacturers  of  muslins  and  the  defendants  are  manufacturers  of 
shirts,  and  therefore  the  plaintiffs  cannot  complain  of  the  use  of  their 
trade-mark,  or  a  servile  imitation  of  it  by  defendants  when  affixed  to 
their  shirts,  we  do  not  see  the  force  of  such  reasoning.  It  is  too  plain 
to  require  any  demonstration  that  if  the  defendants  manufacture  shirts 
of  a  muslin  greatly  inferior  in  quality  to  the  plaintiffs'  muslin,  and 
pass  them  off  upon  the  public  as  shirts  made  of  the  plaintiffs'  muslin, 
the  plaintiffs  may  suffer  greatly  thereby  in  their  reputation  as  manu- 
facturers, and  consequently  in  their  sales  of  the  muslin  which  they 
manufacture.  Against  this  injury  the  plaintiffs  are  entitled  to  be 
protected  by  the  writ  of  injunction." 

661.  Kelly  v.  Byles. 
1879.     40  L.  T.  623. 

PLAINTIFF  had  published  since  1852,  numerous  trade  direc- 
tories, which  he  called  "post  office  "  directories,  and  was  the 

386 


TAYLOR  V.  BOTHIN. 

registered  proprietor  of  "  The  Post  Office  Directory  of  the  West 
Riding  of  Yorkshire."  The  defendants  compiled  a  directory 
of  the  town  of  Bradford,  which  they  proposed  to  call  the 
"  Post  Office  Bradford  Directory."  In  an  action  to  restrain 
the  use  of  the  words  "post  office"  etc.,  Held,  that  the  taking 
of  part  of  the  title  of  a  registered  copyright  work  without 
fraud,  and  without  any  circumstances  from  which  an  animus 
furandi  could  be  inferred,  was  not  an  infringement ;  that  as 
to  plaintiff's  property  in  the  name  "post  office"  as  a  quasi 
trade-mark,  a  right  of  that  kind  could  only  attach  where  the 
wares  offered  for  sale  were  so  nearly  identical  that  the  use  of 
the  particular  trade-mark  or  name  might  mislead  unwary  pur- 
chasers. 


662.  Williams  v.  Adams. 
1879.     C.  C.  U.  S.  N.  Dist.  III.—  7  Rep.  613. 

COMPLAINANT  had  long  used  the  word  "  Yankee  "  to  de- 
signate his  soap;  defendant  used  the  same  word  on  similar 
goods.  On  suit  in  equity,  Held,  that  the  word  "  Yankee  " 
was  a  valid  trade-mark,  and  that  complainant  was  entitled  to 
an  injunction. 

663.  Wharton  v.  Thurber  et  al. 
1879.     Supreme  Court  N.  Y. ;  General  Term.     Not  reported. 

PLAINTIFF  used  as  a  trade-mark  for  his  whiskey  the  words 
"  Chestnut  Crrove  ;  "  defendants  inadvertently  employed  the 
same  designation,  but,  upon  being  notified,  discontinued  its 
use. 

Action  for  injunction  and  account.  Injunction  granted, 
but  without  costs  or  damages. 

664.  Taylor  v.  Bothin. 
1879.     U.  S.  C.  C.  Dist.  Cal.—  S  Rep.  516. 

IT  appeared  that  complainant  had  discovered  a  process  for 
making  a  valuable  yeast  powder,  and  that  afterward  with  de- 

387 


TAYLOR  V.  BOTHIN. 

fendant  had  manufactured  and  sold  the  same  under  the  name 
of  "  Mrs.  Mills'  Cream."  In  the  second  year  of  their  connec- 
tion, defendant  secretly  applied  to  the  patent  office  and  reg- 
istered the  words  "  Mrs.  Mills'  Cream  "  as  a  trade-mark  for 
the  powder. 

On  a  suit  in  equity,  Held,  that  the  registration  was  invalid, 
and  that  the  parties  were  equally  entitled  to  use  the  name 
"  Mrs.  Mills'  Cream:' 

Field,  J.  "  The  only  serious  question  for  deliberation  is,  whether 
the  complainant  is  entitled  to  the  exclusive  use  of  the  trade-mark,  or 
only  to  a  joint  or  equal  use  of  it  with  the  defendant.  Had  the  name 
been  suggested'  and  used  by  the  complainant  before  the  business  con- 
nection with  the  defendant,  there  would  be  no  doubt  of  his  exclusive 
right  to  it.  But  it  having  been  suggested  and  adopted  after  that  con- 
nection was  formed,  upon  a  consultation  of  the  parties  on  the  subject, 
and  then  used  for  their  joint  benefit,  we  are  led  to  the  conclusion  that 
they  are  equally  entitled  to  its  use  after  that  connection  ceased. 
Clearly  the  defendant  has  no  such  exclusive  right,  and  the  represen- 
tations which  he  must  have  made  to  obtain  the  letters  of  registration 
required  by  law,  "  that  no  other  person,  firm,  or  corporation  "  had  the 
right  to  its  use,  are  inconsistent  with  the  facts.  It  matters  not 
whether  the  arrangement  between  the  parties  constituted  a  partnership, 
or  whether  the  complainant  was  to  receive  a  portion  of  the  profits  of 
the  business  as  his  salary  ;  in  either  case,  it  was  his  process  of  mak- 
ing a  valuable  powder  which  was  to  be  used,  and  it  was  to  his  dis- 
covery that  the  name  was  to  be  given.  We  do  not  understand  that 
when  the  complainant  said  he  gave  his  process  to  the  defendant,  he 
intended  to  abandon  all  right  to  the  use  of  it,  and  to  the  manufacture 
of  the  powder  designated  by  its  new  name ;  but  only  that  he  made  the 
defendant  acquainted  with  the  secret  of  the  process  —  the  manner  in 
which  the  powder  was  to  be  made.  Having  imparted  that  knowledge, 
and  the  two,  in  conjunction,  having  subsequently  adopted  the  name, 
they  must  be  regarded  as  equally  having  the  right  to  use  it." 

388 


CONSOLIDATED  FRUIT  JAB  CO.  V.  THOMAS. 

665.  Consolidated  Fruit  Jar  Co.  v.  Thomas. 
1879.     C.  C.  U.  S.  Dist.  N.  J.     Not  yet  reported. 

THE  Consolidated  Fruit  Jar  Company  had  used  as  a  trade- 
mark a  monogram,  consisting  of  the  initials  of  its  corporate 
name,  which  it  applied  to  its  goods  in  characteristic  ways ; 
defendant  sold  goods  of  the  same  nature,  to  which  a  monogram 
composed  of  different  letters  had  been  applied,  to  all  the  in- 
tents and  purposes,  in  the  precise  manner  that  had  been  prac- 
tised by  complainant.  On  motion  for  preliminary  injunction, 
Held,  that  complainant  was  entitled  to  an  injunction ;  and 
that  the  fact  that  it  had  neglected  to  sue  for  a  considerable 
period  was  immaterial  as  affecting  the  issuance  of  the  writ. 

Per  Nixon,  J.  "  There  is  no  difficulty  about  this  case  in  regard 
to  the  infringement.  The  embarrassment  arises  in  determining  to  what 
extent  the  injunction  should  go,  or  what  it  should  include. 

"  The  complainant  corporation  and  the  Hero  Glass  Works,  which 
are  the  producers  of  the  articles  complained  of,  are  the  principal 
makers  of  fruit-jar  caps  in  the  country ;  any  interference  with  the 
business  of  the  one  would  practically  give  a  monopoly  to  the  other. 
But  such  a  consideration  should  not  and  will  not  hinder  the  court 
from  protecting  the  complainants  in  all  their  rights.  The  question  of 
infringement  is  ordinarily  more  easily  determinable  in  trade-mark 
cases  than  in  patent  cases,  because  they  are  less  dependent  upon  the 
testimony  of  witnesses.  Whether  one  thing  is  a  colorable  imitation 
of  another  is  answered  most  satisfactorily  by  judicial  inspection  and 
comparison  of  the  two  ;  and  if  the  court  is  convinced  by  such  inspec- 
tion and  comparison  that  the  two  things  are  near  enough  alike  to 
deceive  or  mislead  the  ordinary  purchaser  in  the  exercise  of  ordinary 
care  and  caution,  no  amount  of  expert  evidence  of  substantial  differ- 
ences would  justify  the  court  in  withholding  the  injunction. 

"  The  infringement  by  the  defendant  is  clear;  the  monograms  differ 
because  the  letters  are  not  the  same  ;  but  it  is  not  necessary  for  the 
complainants  to  show  an  exact  imitation  or  similarity  before  they  are 
entitled  to  the  protection  of  the  court.  No  matter  how  vague  may 
be  the  resemblance,  if  it  be  sufficient  to  mislead  the  public,  it  is  un- 
lawful, and,  when  unexplained,  it  is  the  duty  of  the  court  to  infer  in- 

389 


CONSOLIDATED  FRUIT  JAR  CO.  V.  THOMAS. 

tent,  and  to  hold  that  the,  resemblance  was  adopted  for  the  purpose 
of  deception 

"  It  is  difficult  to  lay  down  a  general  rule,  which  will  be  applicable 
to  all  cases,  of  what  constitutes  the  infringement  of  a  trade-mark. 
It  may  be  said,  however,  as  was  substantially  held  by  the  Supreme 
Court  in  McLean  v.  Fleming  (6  Otto,  245)  [580],  that  an  injunction 
should  be  granted  when  the  imitation  is  so  close,  that  by  the  form, 
marks,  contents,  words,  or  their  special  arrangement,  or  by  the  gen- 
eral appearance  of  the  infringing  device,  purchasers  exercising  ordi- 
nary caution  are  liable  to  be  misled  into  buying  the  article  bearing 
it  for  the  genuine  one. 

"  Both  parties  in  the  present  case  have  the  right  to  manufacture  and 
sell  fruit-jar  caps.  The  complainants  have  adopted  and  registered  as 
their  trade-mark  a  monogram  composed  of  the  initial  letters  of  the 
corporation  name.  They  began  its  use  early  in  the  year  1878,  to 
distinguish  their  manufacture  from  the  product  of  other  houses,  and 
particularly  of  their  great  rival,  the  Hero  Glass  Works.  They  placed 
the  monogram  on  the  circular  depression  on  the  top  of  the  cap.  The 
caps  were  put  up  for  the  market  in  wooden  boxes,  in  each  end  of 
which  the  trade-mark  was  printed  in  red  ink.  Each  box  was  also  fur- 
nished with  printed  circulars  on  which  the  monogram  appears  near 
the  bottom  between  the  words  '  like  '  and  '  this.' 

"  The  jar  caps  in  the  defendant's  possession  have  also  a  monogram, 
put  in  the  circular  depression  on  the  head  of  each  cap  ;  the  same  was 
also  printed  in  red  ink  on  the  end  of  the  wooden  boxes  containing 
the  caps,  and  the  boxes  are  supplied  with  circulars  in  a  style  of  print- 
ing to  give  them  the  general  appearance  of  the  complainants'  cir- 
culars, and  also  showing  in  the  same  relative  position  a  printed  mono- 
gram between  the  words  '  like '  and  '  this.' 

"  It  is  proved  that  all  these  resemblances  have  been  adopted  and 
used  by  the  manufacturers  of  the  defendant's  caps  since  the  registry 
and  use  of  the  complainants'  trade-mark.  They  are  not  accidental, 
but  intentional  and  misleading,  and  therefore  unlawful. 

"The  court  suggested  to  counsel  on  the  argument,  that  the  delay  of 
the  complainants  in  applying  to  the  court  for  the  injunction  until  the 
season  for  furnishing  fruit-jar  caps  had  fully  arrived,  had  a  suspicious 
aspect,  and  that  we  should  be  reluctant  to  interfere  with  the  defendant 
whatever  might  be  the  legal  rights  of  the  complainants  if  there  had 
been  laches  in  bringing  the  suit.  The  suggestion  was,  perhaps,  un- 

390 


KIDD  V.  JOHNSON. 

called  for  by  the  facts  of  the  case,  but  it  was  prompted  by  the  ex- 
treme sensitiveness  which  always  springs  up,  when  any  disposition  is 
suspected  of  using  the  process  of  the  court  to  obtain  a  temporary 
business  advantage. 

"  There  has  been  large  discussion  of  the  question  how  far  laches,  in 
stopping  the  infringement  of  a  trade-mark,  will  deprive  a  complainant 
of  the  benefits  of  a  preliminary  injunction.  But  that  discussion  has 
been  put  to  rest,  so  far  as  this  court  is  concerned,  by  the  recent  de- 
cision of  the  Supreme  Court  in  the  case  of  McLean  v.  Fleming,  supra, 
where  it  was  held  that  acquiescence  of  long  standing  was  no  bar  to  an 
injunction,  although  it  precluded  the  party  acquiescing  from  any  right 
to  an  account  for  past  profits. 

"  This  was  only  anticipating  the  later  decision  of  the  High  Court  of 
Justice  in  England  in  the  case  of  Fullwood  v.  Futtwood,  9  L.  R.  Ch. 
Div.  176  [602],  where  the  single  question  involved  was  the  effect  of 
delay  in  prosecuting  for  the  infringement  of  a  trade-mark,  and  where 
the  defendant  set  up  as  a  defence  to  an  application  for  an  injunction, 
that  the  plaintiff  had  known  all  the  material  facts  stated  in  the  plead- 
ings for  a  period  of  at  least  two  or  three  years  before  the  action  was 
brought.  The  court  said  this  was  no  defence,  and  that  where  an  in- 
junction is  sought  in  aid  of  a  legal  right  mere  lapse  of  time  was  no 
bar  to  granting  it.  The  injunction  was  treated  as  always  a  matter  of 
course,  if  it  appeared  that  the  legal  right  existed. 

"  The  court  is  of  the  opinion  that  the  complainants  are  entitled  to 
an  injunction  restraining  the  defendant  pendente  lite  from  the  use  of 
the  monogram  on  the  fruit  jar  caps,  and  on  the  ends  of  the  boxes, 
and  from  circulating  the  printed  circulars  so  closely  resembling  the 
circulars  of  the  complainants,  and  it  is  ordered  accordingly." 

666.  Kidd  v.  Johnson. 
1879.     S.  C.  U.  S.     To  appear  in  102  U.  S. 

IN  1849  one  S.  N.  Pike,  doing  business  in  Cincinnati  as 
wholesale  dealer  in  whiskey,  adopted  as  a  trade-mark  for  his 
manufacture  the  words  "  S.  N.  Pike's  Magnolia  Whiskey-, 
Cincinnati,  Ohio"  enclosed  in  a  circle,  which  he  placed  on 
packages  containing  the  liquor.  Between  that  date  and  1863 
he  was  in  partnership  with  different  persons,  doing  business 
there  under  the  name  of  S.  N.  Pike  &  Co.  In  1863,  having 

391 


KIDD  v.  JOHNSON. 

dissolved  his  connection  with  others,  he  took  as  partners  two 
of  his  former  clerks,  Tilney  and  Kidd,  continuing  the  original 
firm  name.  The  same  trade-mark  was  used  by  the  new  firm 
as  it  had  been  by  the  preceding  firm,  without  any  change.  At 
this  time,  and  subsequently  until  its  sale  in  1868,  the  real 
property  in  Cincinnati,  upon  which  the  business  was  conducted, 
and  the  distillery,  with  its  fixtures  and  appurtenances,  be- 
longed to  Pike  individually.  In  1868  the  firm  removed  its 
entire  business  to  New  York  city,  and  Pike  sold  the  real  prop- 
erty in  Cincinnati,  and  the  stills,  tubs,  engines,  boilers,  tub- 
ing, and  all  apparatus  in  his  distillery,  to  the  firm  of  Mills, 
Johnson  &  Co.,  who  were  also  engaged  in  the  manufacture 
and  sale  of  whiskey  at  that  place.  At  the  same  time  Pike  ex- 
ecuted and  delivered  to  the  purchasers  a  separate  instrument, 
stating  that,  having  sold  his  premises  to  them,  he  extended  to 
them  and  their  successors  the  use  of  all  his  brands  formerly 
used  by  him  in  his  Cincinnati  house. 

Mills,  Johnson  &  Co.  continued  for  some  years  the  manu- 
facture and  sale  of  whiskey  on  the  premises  thus  purchased, 
using  without  objection  from  any  one  the  brands  previously 
used  by  S.  N.  Pike  &  Co.  They  were  succeeded  in  business 
by  the  complainants,  who,  it  is  admitted,  are  entitled  to  all 
the  rights  which  they  possessed  in  the  trade-mark  in  question. 
S.  N.  Pike  died  in  1872,  and  his  surviving  partners  formed  a 
new  partnership,  under  the  name  of  George  W.  Kidd  &  Co., 
which  was  subsequently  dissolved,  and  to  its  business  Kidd, 
the  appellant  in  this  case,  succeeded. 

Held,  that  the  trade-mark  was  the  exclusive  property  of 
Mills,  Johnson  &  Co. 

Per  Field,  J.  "  As  to  the  right  of  Pike  to  dispose  of  his  trade- 
mark in  connection  with  the  establishment  where  the  liquor  was 
manufactured,  we  do  not  think  there  can  be  any  reasonable  doubt- 
It  is  true,  the  primary  object  of  a  trade-mark  is  to  indicate  by  its 
meaning  or  association  the  origin  of  the  article  to  which  it  is  affixed. 
As  distinct  property,  separate  from  the  article  created  by  the  original 
producer  or  manufacturer,  it  may  not  be  the  subject  of  sale.  But 
when  the  trade-mark  is  affixed  to  articles  manufactured  at  a  particular 

392 


SAWYER  V.  HORN. 

establishment  and  acquires  a  special  reputation  in  connection  with 
the  place  of  manufacture,  and  that  establishment  is  transferred  either 
by  contract  or  operation  of  law  to  others,  the  right  to  the  use  of  the 
trade-mark  may  be  lawfully  transferred  with  it.  Its  subsequent  use 
by  the  person  to  whom  the  establishment  is  transferred  is  considered 
as  only  indicating  that  the  goods  to  which  it  is  affixed  are  manufact- 
ured at  the  same  place  and  are  of  the  same  character  as  those  to  which 
the  mark  was  attached  by  its  original  designer." 


667.    Sawyer  v.  Horn. 
1880.     C.  C.  U.  S.  Dis.  Md.    Not  yet  reported. 

COMPLAINANT  alleged  that  to  individualize  and  identify 
his  bluing  he  adopted  a  peculiar  and  original  form  or  style  of 
package,  consisting  of  a  blue  cylinder  having  a  red  top,  and 
that  his  goods  had  long  been  known  and  identified  by  consum- 
ers by  the  peculiar  appearance  of  the  package. 

It  was,  also,  set  forth  that  his  method  of  packing,  includ- 
ing the  size,  shape,  and  color  of  his  cartoons  or  large  packages, 
was  original  with  him,  and  had  never  been  varied. 

The  respondent  was  shown  to  have  knowingly  made  and 
sold  bluing  put  up  in  boxes  and  packages  which  involved  the 
employment  of  imitations  of  all  the  leading  incidents  and 
features  of  complainant's  article  ;  complainant's  goods  being 
copied  in  substantially  every  particular,  except  that  defendant 
used  his  own  name  and  made  changes  in  the  phraseology  of 
his  labels. 

Suit  in  equity  for  injunction  and  account. 

Held,  that  complainant  was  entitled  to  an  injunction  re- 
straining the  imitation  of  his  package,  and  to  an  accounting 
as  prayed. 

Per  Morris,  J.  "  We  have  come  to  the  conclusion  in  the  case  be- 
fore us,  that  the  respondent  should  be  enjoined  from  putting  up  his 
goods  in  the  manner  in  which  he  has  been  doing  as  shown  by  the 
exhibit,  or  in  any  other  manner  so  simulating  the  form,  color,  labels, 
and  appearance  given  by  the  complainant  to  his  goods  as  to  mislead 
purchasers  into  mistaking  one  for  the  other. 

393 


SAWYER  V.  HORN. 

"  What  we  decide  is,  that  whether  the  complainant  has  a  trade-mark 
or  not,  as  he  was  the  first  to  put  up  bluing  for  sale  in  the  peculiarly 
shaped  and  labelled  boxes  adopted  by  him,  and  as  his  goods  have 
become  known  to  purchasers  and  are  bought  as  the  goods  of  the 
complainant  by  reason  of  their  peculiar  shape,  color,  and  label,  no 
person  has  the  right  to  use  the  complainant's  form  of  package,  color, 
or  label,  or  any  imitation  thereof,  in  such  manner  as  to  mislead  pur- 
chasers into  buying  his  goods  for  those  of  the  complainant,  whether 
they  be  better  or  worse  in  quality. 

"  And  finding  from  the  exhibits  and  proof  in  the  cause  that  the 
bluing  put  up  by  the  respondent  is  not  only  well  calculated  so  to 
mislead  purchasers,  but  has  actually  done  so  to  the  injury  of  the  com- 
plainant, we  are  of  opinion  that  respondent  should  be  perpetually  en- 
joined, and  that  he  should  account  to  the  complainant  for  the  dam- 
ages sustained  by  him." 

The  final  decree  was  as  follows  : — 

"  This  cause  having  come  on  to  be  finally  heard  at  this,  the  term 
aforesaid,  upon  the  pleadings  and  proofs,  and  having  been  fully  ar- 
gued by  the  counsel  for  the  respective  parties,  and  fully  considered 
by  the  court,  it  is  thereupon,  this  17th  day  of  February,  in  the  year 
1880,  by  the  Circuit  Court  of  the  United  States,  in  and  for  the  Dis- 
trict of  Maryland,  adjudged,  ordered,  and  decreed  : 

"  I.  That  heretofore,  to  wit,  as  early  as  the  year  1866,  the  com- 
plainant was  engaged  in  the  manufacture  of  bluing,  at  the  city  of 
Boston,  in  the  State  of  Massachusetts,  and  that,  in  order  to  distinguish 
and  identify  his  bluing  from  that  of  all  other  producers,  he  caused 
the  same  to  be  packed  in  cylindrical  boxes  enclosed  in  a  blue  label 
and  provided  with  a  red  seal  at  their  tops,  each  box  arranged  to  pre- 
sent the  appearance  of  a  blue  cylinder  having  a  red  top  as  shown 
with  sufficient  accuracy  in  the  illustration  marked  '  complainant's 
small  box,'  and  hereto  appended  and  made  a  part  hereof;  that  such 
box  presenting  the  appearance,  to  wit :  the  appearance  of  a  blue 
cylinder  having  a  red  top,  was  originated  and  first  used  by  the  com- 
plainant, and  by  him  adopted  as  a  means  of  distinguishing  and  iden- 
tifying the  bluing  made  by  him,  and  has  been  employed  by  him 
continuously,  since  the  day  of  its  first  use  and  adoption,  to  indicate 
and  signify  the  origin  of  his  goods. 

"  II.  That  the  complainant's  bluing  is  generally  known  and  identi- 
fied by  consumers  in  the  city  of  Baltimore  and  elsewhere  by  the 

394 


THORLEY'S  CATTLE  FOOD  CO.  V.  MASSAM. 

appearance  of  the  said  box  by  him  originated  and  used  as  aforesaid, 
to  wit :  as  being  packed  in  a  blue  cylinder  having  a  red  top. 

"  III.  That  the  respondent,  James  G.  Horn,  has  violated  and  in- 
fringed the  rights  of  the  complainant  by  preparing  and  vending  blue 
in  boxes  having  the  appearance  of  blue  cylinders  with  red  tops,  and 
prepared  in  such  close  imitation  of  complainant's  bluing  as  to  deceive 
the  public  and  cause  respondent's  bluing  to  be  purchased  by  consum- 
ers as  and  for  the  bluing  of  complainant. 

"  IV.  And  it  is  further  adjudged,  ordered,  and  decreed  that  an  in- 
junction issue  perpetually  enjoining  and  restraining  the  respondent, 
James  G.  Horn,  his  servants,  agents,  and  workmen,  and  all  persons 
acting  for  him  or  under  his  directions,  from  packing,  or  selling,  or  of- 
fering to  sell  bluing  put  up  in  boxes  with  labels  in  imitation  of  the 
boxes  and  labels  used  by  complainant,  as  shown  in  these  proceedings, 
to  wit,  in  cylindrical  boxes  with  blue  labels  and  red  tops  (one  of  said 
respondent's  boxes  being  hereto  appended),  and  from  putting  up,  pack- 
ing, selling,  or  offering  to  sell  any  bluing  prepared  in  any  manner  so 
similar  to  the  boxes,  labels,  and  appearance  of  complainant's  bluing 
as  to  cause  confusion  in  the  market  and  mislead  purchasers  into 
mistaking  respondent's  bluing  for  the  bluing  prepared  by  the  com- 
plainant. 

"  V.  And  it  is  further  adjudged,  ordered,  and  decreed  that  the 
complainant  is  entitled  to  have  and  recover  the  profits  which  have 
been  diverted  from  him  by  reason  of  said  infringement  upon  his 
rights,  as  aforesaid,  and  by  reason  of  the  sales  of  bluing  made  by  re- 
spondent in  imitation  of  said  complainant's  goods ;  and  to  enable  the 
court  to  ascertain  the  said  profits  to  which  the  complainant  is  entitled, 
it  is  ordered  that  this  cause  be,  and  the  same  is,  hereby  referred  to 
G.  Morris  Bond,  Esq.,  one  of  the  commissioners  of  this  court,  with 
directions  to  state  an  account  thereof,  from  the  proceedings  and  proofs 
now  in  the  cause,  and  such  other  proof  as  may  be  laid  before  him. 

"  VI.  And  it  is  further  adjudged,  ordered,  and  decreed  that  the 
said  respondent,  James  G.  Horn,  pay  the  costs  of  these  proceed- 
ings." 

» 

668.  Thorley's  Cattle  Food  Co.  v.  Massam. 

1880.     English  Ct.  App.  —  42  L.  T.  Rep.  N.  S.  851. 
THE  facts  proved  in  evidence  were  briefly  these : 
Joseph  Thorley,  the  original  maker  of  the  cattle  food,  died 

395 


THORLEY'S  CATTLE  FOOD  CO.  V.  MASSAM. 

in  1876,  having  by  his  will  directed  that  his  business  should 
be  carried  on  by  his  executors,  with  the  assistance  of  his  son 
Joseph  Thorley. 

J.  W.  Thorley,  whose  name  was  given  to  the  plaintiff  com- 
pany, was  a  brother  of  the  late  Joseph  Thorley,  and  both 
brothers  were  equally  acquainted  with  the  secret  for  com- 
pounding the  cattle  food,  which  they  had  obtained  from  a 
person  named  Fawcett.  J.  W.  Thorley  had  at  one  time  been 
in  the  employ  of  his  brother,  and  being  acquainted  with  the 
business,  he  was,  on  the  death  of  Joseph  Thorley,  induced  to 
join  in  getting  up  a  company,  which  was  registered,  with  a 
capital  of  £200,  divided  into  4,000  shares  of  Is.  each,  J.  W. 
Thorley  having  signed  the  memorandum  of  association  as  the 
holder  of  one  share. 

In  the  action  of  J.  W.  Thorley'' s  Cattle  Food  Company  v. 
Massam,  witnesses  were  examined  on  both  sides  upon  the 
question  whether  the  article  sold  by  the  defendants  was  the 
same  as  that  manufactured  by  the  plaintiffs.  Among  the  wit- 
nesses for  the  plaintiffs  were  several  well-known  analytical 
chemists.  The  effect  of  their  evidence  was  that,  although  the 
analysis  they  had  made  differed  in  some  unimportant  items 
from  that  of  the  defendants,  the  variation  was  so  slight  that 
the  two  articles,  for  all  purposes  of  food,  were  essentially  the 
same.  The  differences  might  be  traced  to  the  variation  in 
the  quality  of  the  ingredients  used.  On  the  other  side,  the 
evidence  went  to  show  that  there  was  an  ascertainable  dif- 
ference between  the  two  compounds,  and  that  as  the  defend- 
ants' mixture  contained  more  spice  and  more  sugar,  it  was 
likely  to  be  more  palatable  to  the  cattle  than  the  plaintiffs' 
mixture  ;  but  it  was  admitted  that  if  the  two  mixtures  were 
placed  before  a  cow  in  the  same  manger,  she  would,  in  all 
probability,  be  unable  to  distinguish  the  difference,  and  would 
eat  them  both.  In  the  second  action,  by  the  executors  against 
the  company,  witnesses  were  examined  upon  the  question 
whether  or  not  the  travellers  sent  round  the  country  by  the 
company  had  or  had  not  represented  to  the  purchasers,  or  led 
them  to  believe,  that  J.  W.  Thorley  &  Co.  were  the  succes- 

396 


THORLEY'S  CATTLE  FOOD  CO.  V.  MASSAM. 

sors  to  the  business  formerly  carried  on  by  Joseph  Thorley, 
deceased,  and  that  they  were,  in  fact,  carrying  on  that  busi- 
ness. 

The  company  had  issued  an  almanac  in  which  appeared  a 
report  and  analysis  by  Dr.  Hassall  of  "  Thorley 's  Food  for 
Cattle,"  which  had  been  made  at  the  request  of  Joseph  Thor- 
ley, and  on  the  article  made  by  him  ;  and  a  list  of  the  prizes 
obtained  for  cattle  through  the  use  of  "  Thorley's  Food  for 
Cattle  ; "  though  in  fact  the  condiment  had  been  that  sup- 
plied by  Joseph  Thorley. 

There  was  also  in  the  almanac  the  following  statement : 
"  The  executors  have  continued  to  manufacture  some  food  and 
sell  it  under  the  name  of  '  Joseph  Thorley,'  which  they  have 
registered  as  their  trade-mark.  The  public  may  by  this  ruse 
be  induced  to  imagine  that  Mr.  Joseph  Thorley  is  still  living 
and  manufacturing  the  cattle  food  which  is  being  sold  by  his 
executors,  whereas  the  only  surviving  Mr.  Thorley  (Mr.  J.  W. 
Thorley)  has  no  connection  whatever  with  the  persons  trading 
under  the  name  of  the  late  Joseph  Thorley." 

The  packets  in  which  the  article  sold  by  the  company  was 
made  up  were  of  the  same  shape  and  size,  and  wrapped  in  the 
same  colored  paper,  as  those  used  by  Joseph  Thorley  and  by 
his  executors,  and  bore  the  same  directions  for  use.  But  it 
was  stated  that  the  company  sent  out  their  packets  in  boxes 
of  a  different  shape  and  size  from  those  used  by  Thorley  and 
his  executors. 

Malins,  V.  C.,  came  to  the  conclusion  upon  the  evidence, 
that  the  two  articles  sold  by  the  executors  and  the  company 
respectively  were  substantially  the  same,  and  in  J.  W.  Thor- 
ley's Cattle  Food  Company  v.  Massam  he  restrained  the  ex- 
ecutors from  issuing  advertisements  injuring  the  company  in 
their  trade  by  representing  in  effect  that  the  cattle  food  sold 
by  the  company  was  spurious.  He  dismissed  the  action  of 
Massam  v.  J.  W.  Thorley's  Cattle  Food  Company,  being  of 
opinion  that  there  was  not  sufficient  evidence  adduced  by  the 
plaintiffs,  on  whom  the  burden  of  proof  lay,  to  show  that  the 

397 


THORLEY'S  CATTLE  FOOD  CO.  V.  MASSAM. 

company  represented  that  they  were  the  successors,  or  were 
carrying  on  the  business,  of  Joseph  Thorley.1 
The  executors  appealed  from  both  decisions. 

James,  L.  J.  "  In  the  first  case  we  came  to  a  decision  really,  prac- 
tically, and  substantially,  without  hearing  the  respondents,  the  mo- 
ment we  had  the  two  documents  read  to  us,  one  of  them  throwing  a 
light  upon  the  other.  We  thought  that  the  executors,  the  defendants 
in  that  action,  had  said  more  than  they  ought  to  have  said.  They 
might  have  given  warning  by  saying  that  the  company  were  not  car- 
rying on  their  business,  and  were  different  from  them,  and  they  might 
have  said  that  they  were  not  successors  of  Joseph  Thorley  ;  but  they 
went  on  to  make  allegations  which  were  really  allegations  imputing 
to  them  that  they  were  foisting  a  bad  article  upon  the  public,  and  so 
on,  stating  in  substance  that  it  was  a  fictitious  article,  and  an  article 
calculated  to  do  mischief.  We  thought  Mr.  Glasse  had  not  proved 
his  justification  of  that  libel.  There  was  a  libel  if  not  justified ;  and 
having  our  attention  called  to  the  evidence,  we  thought  the  executors 
had  failed  to  prove  that  there  was  any  foundation  in  point  of  fact  for 
the  assertion  that  the  company  were  foisting  an  article  as  something 
they  were  not  entitled  to  represent  it,  that  is,  independently  of  what 
I  may  call  the  trade  name  or  trade-mark.  Now  in  the  other  case, 
which  is  probably  the  more  important  one,  I  am  of  opinion  that  the 
executors,  the  plaintiffs  in  the  action,  ought  to  have  succeeded,  and 
ought  therefore  to  succeed  before  us.  In  the  first  place  I  will  dispose 
of  this  point  which  has  been  raised,  that  there  is  anything  in  the 
nature  of  an  estoppel,  or  anything  in  the  nature  of  a  bar  to  the  plain- 
tiffs' right  to  relief  on  any  ground  of  this  kind  by  reason  of  their  hav 
ing  discontinued  the  former  action  of  Massam  v.  J.  W.  Thorley' s  Gat- 
tie  Food  Company.  The  plaintiffs  there  failed  to  get  an  interlocutory 
injunction,  and  having  failed  to  do  that  they  discontinued  the  action, 
and  paid  the  costs.  That  is  not  a  resjudicata  which  can  be  pleaded  or 
dealt  with  as  resjudicata.  All  that  amounts  to  is,  that  the  vice  chan- 
cellor did  not  then  think  a  case  had  been  made  out  for  the  interfer- 
ence of  the  court  upon  interlocutory  application.  No  doubt  the  vice 
chancellor  gave  reasons  in  his  judgment,  which  reasons  he  has  also 
repeated  in  the  present  case,  basing  his  decision  principally  upon  a 
case  of  James  v.  James,  26  L.  T.  Rep.  N.  S.  568  ;  L.  Rep.  13  Eq. 

i  See  the  report,  41  L.  T.  R.  N.  S.  542. 
398 


THORLEY'S  CATTLE  FOOD  CO.  V.  MA.SSAM. 

421.  Now  I  am  of  opinion  that  that  application  for  an  injunction 
ought  to  have  succeeded,  assuming  the  facts  to  have  been,  as  we  are 
told  they  were,  substantially  the  same  as  the  facts  now  before  us,  be- 
cause I  am  clearly  of  opinion  that  the  defendant  company  never  had 
a  right  to  use  the  term  '  Thorley's  Food  for  Cattle.'  The  right  to 
use  that  name  depends,  or  may  be  supposed  to  depend,  upon  what 
was  supposed  to  have  been  decided  in  Burgess  v.  Burgess,  3  De  G., 
M.  &  G.  896,  and  afterward  decided  in  James  v.  James.  Now,  Bur- 
gess v.  Burgess,  has  really  been  very  much  misunderstood,  if  it  has 
been  understood  to  say  that  anybody  can  always  use  his  own  name 
as  a  description  of  an  article,  whatever  may  be  the  consequence  of 
it,  or  whatever  may  be  the  motive  for  doing  it,  or  whatever  may 
be  the  result  of  it.  No  doubt,  Knight  Bruce,  L.  J.,  made  a  very 
epigrammatic  judgment,  which  probably  has  therefore  caused  it  to 
be  recollected  more  than  that  of  Turner,  L.  J.,  who  followed  him. 
Knight  Bruce,  L.  J.,  in  his  judgment,  said  :  'All  the  queen's  sub- 
jects have  a  right,  if  they  will,  to  manufacture  and  sell  pickles  and 
sauces,  and  not  the  less  that  their  fathers  have  done  so  before 
them.  All  the  queen's  subjects  have  a  right  to  sell  these  articles 
in  their  own  names,  and  not  the  less  so  that  they  bear  the  same 
name  as  their  fathers ;  nor  is  there  anything  else  that  this  defend- 
ant has  done  in  question  before  us.'  Then  he  goes  on :  '  He  car- 
ries on  business  under  his  own  name,  and  sells  his  essence  of  ancho- 
vies as  "  Burgess's  Essence  of  Anchovies,"  which,  in  truth,  it  is.  If 
any  circumstance  of  fraud  now  material  had  accompanied,  and  were 
continuing  to  accompany  the  case,  it  would  stand  very  differently,  but 
the  whole  case  lies  in  what  I  have  stated.'  But  the  way  in  which 
Turner,  L.  J.,  puts  it  is  this,  which  I  take  to  be  much  more  accurate : 
'  I  concur  in  the  opinion  that  this  motion  should  be  refused  with  costs. 
No  man  can  have  any  right  to  represent  his  goods  as  the  goods  of  an- 
other person,  but  in  applications  of  this  kind  it  must  be  made  out  that 
the  defendant  is  selling  his  own  goods  as  the  goods  of  another.  Where 
a  person  is  selling  goods  under  a  particular  name,  and  another  person 
not  having  that  name  is  using  it,  it  may  be  presumed  that  he  so  uses 
it  to  represent  the  goods  so  sold  by  himself  as  the  goods  of  the  person 
whose  name  he  uses  ;  but  where  the  defendant  sells  goods  under  his 
own  name,  and  it  happens  that  the  plaintiff  has  the  same  name,  it 
does  not  follow  that  the  defendant  is  selling  his  goods  as  the  goods  of 
the  plaintiff.  It  is  a  question  of  evidence  in  each  case  whether  there 

399 


THORLEY'S  CATTLE  FOOD  CO.  V.  MASSAM. 

is  false  representation  or  not.'  That  I  take  to  be  the  accurate  de- 
scription of  the  law  which  was  really  adopted  by  the  House  of  Lords, 
which  now,  of  course,  has  settled  the  law  paramount  to  all  the  cases 
before  it  in  that  case  of  Wotherspoon  v.  Currie,  L.  Rep.  5  II.  of  L. 
508,  in  which  the  House  of  Lords  differed  from  the  view  that  I  orig- 
inally took  in  that  case.  I  thought  myself  bound,  in  Wotherspoon  v. 
Currie,  to  apply  what  I  thought  was  the  rule  of  law  as  laid  down  in 
Burgess  v.  Burgess,  and  some  other  cases  which  seemed  to  have  fol- 
lowed it,  that  a  man  had  a  right  to  use  a  name  if  he  was  not  telling 
that  which  was  untrue  on  the  face  of  it.  But  the  House  of  Lords 
came  to  the  conclusion  that  there  were  things  which  were  marks  of 
fraud  in  that  case.  The  words  used  were,  '  Currie  &  Co.,  starch  and 
corn  flour  manufacturers,  Glenfield.'  Now  the  name  of  the  starch  of 
the  plaintiff  was  '  Gleufield  Starch,' and  the  defendant  was  actually 
manufacturing  starch  at  Glenfield  for  the  purpose  of  enabling  him  to 
say  that  he  was  manufacturing  it  at  Glenfield.  There  could  be  no 
doubt  about  that;  and  the  House  of  Lords  said  the  mere  fact  that  he 
was  really  carrying  on  the  manufacture  at  Glenfield,  and  was  not 
therefore  telling  a  lie  in  that  respect,  did  not  exempt  him  from  the 
consequences  of  this,  that  the  whole  thing  was  intended  and  calculated 
to  produce  on  the  mind  of  the  purchasers  the  belief  that  his  article 
was  the  article  of  the  plaintiffs.  Lord  Westbury  sums  it  up  in  a  few 
words :  '  I  take  it  to  be  clear  from  the  evidence  that  long  antecedent 
to  the  operations  of  the  respondent  the  word  "  Glenfield "  had  ac- 
quired a  secondary  signification  or  meaning  in  connection  with  a  par- 
ticular manufacture.  In  short,  it  had  become  the  trade  denomination 
of  the  starch  made  by  the  appellant.  It  was  wholly  taken  out  of  its 
ordinary  meaning,  and  in  connection  with  starch  had  acquired  that 
peculiar  secondary  signification  to  which  I  have  referred.  The  word 
"  Glenfield,"  therefore,  as  a  denomination  of  starch,  had  become  the 
property  of  the  appellant.  It  was  his  right  and  title  in  connection 
with  the  starch.  Now  the  question  is,  has  that  property  been  invaded 
by  the  respondent  ?  and  I  take  the  whole  proceedings  of  the  respon- 
dent from  beginning  to  end  to  have  been  nothing  in  the  world  more 
than  a  contrivance  for  getting  the  word  "  Glenfield  "  associated  with 
his  manufacture.  If  that  be  true,  what  the  respondent  has  done  has 
been  done  malo  animo  with  a  view  of  possessing  himself  of  a  denom- 
ination which  was  the  property  of  the  appellant.'  I  should  like  to 
say  a  few  words  on  that  case  of  James  v.  James,  which  the  vice  chan- 

400 


THORLEY'S  CATTLE  FOOD  CO.  V.  M ASSAM. 

cellor  in  this  ease  considered  himself  bound  by.  There  may  be  a  dis- 
tinction, which  I  am  going  to  point  out,  between  that  case  and  this  ; 
but  if  they  be  practically  the  same,  which  I  am  bound  to  say  I  think 
they  are,  for  myself,  I  cannot  concur  in  the  decision  in  James  v. 
James,  nor  in  the  reasoning  which  led  to  it,  nor  in  the  distinctions 
which  were  attempted  to  be  taken.  Now  in  James  v.  James,  a  Lieut. 
James  had  invented  a  thing  called  a  horse-blister  —  '  Lieut.  James's 
Horse-blister.'  It  was  manufactured  by  himself,  and  he  conveyed 
it  to  persons  upon  trust  for  some  members  of  his  family.  Another 
person  of  the  name  of  James,  a  member  of  the  family,  then  made  it 
after  the  death  of  Lieut.  James,  and  sold  it  under  the  same  name. 
Now  Lord  Romilly,  JVL  R.,  was  of  opinion  that  although  during  the 
lite-time  of  Lieut.  James  that  could  not  be  done,  it  could  be  done  after 
his  death.  I  am  utterly  unable  to  perceive  any  ground  for  that  dis- 
tinction. If  Lieut.  James  had  the  trade-mark,  or  what  was  equivalent 
to  a  trade-mark,  during  his  life ;  if  Lieut.  James  had  the  right  to  pre- 
vent anybody  of  the  name  of  James  or  otherwise  from  selling  *  Lieut. 
James's  horse-blister/  I  cannot  conceive  how  that  right  was  not  trans- 
mitted to  his  legal  personal  representatives,  or  why  his  legal  personal 
representatives  had  not  the  same  right  as  Lieut.  James  had  to  enforce 
that  which  was  his  right  of  property,  to  use  Lord  Westbury's  expres- 
sion, in  connection  with  the  manufacture  of  a  horse-blister.  It  is 
possible  that  in  that  case  the  master  of  the  rolls  may  have  thought 
that  '  Lieut.  James's  horse-blister '  being  a  mere  recipe,  anybody  who 
had  got  the  recipe  might  go  and  get  it  made  up  by  any  chemist  or 
druggist,  and  therefore  that  •  Lieut.  James's  horse-blister  '  was  merely 
an  indication  that  it  was  made  according  to  Lieut.  James's  recipe, 
which  I  am  bound  to  say  I  am  unable  to  concur  in  ;  still  there  might 
be  that  distinction  that  there  the  recipe  was  the  whole  thing.  Now  I 
cannot  apply  that  to  a  case  like  the  present,  where  two  people  could 
make  the  article  in  question  from  the  same  recipe,  and  yet  make  arti- 
cles as  dissimilar  as  possible  in  point  of  quality.  Of  course,  where 
we  are  dealing  with  an  article  of  food,  a  condiment,  the  merit  and  the 
value  of  the  article  depends  on  the  great  care  which  the  one  man 
might  or  might  not  take  in  selecting  the  very  best  articles  he  was 
compounding  together,  and  in  the  manipulation  of  the  articles,  and 
the  preservation  of  them  during  the  course  of  manufacture.  But  I 
do  not  think  that  there  really  is  any  substantial  difference  between 
the  two  cases.  What,  as  it  appears  to  me,  was  in  the  mind  of  the 
26  401 


THORLEY'S  CATTLE  FOOD  CO.  V.  MABSAM. 

master  of  the  rolls  at  the  time,  and  what  led  to  the  fallacy,  was  this  : 
there  is  no  doubt  that  if  a  man  takes  out  a  patent  for  a  thing,  and  the 
thing  is  known  as  his  patent,  for  instance,  say  ;  Flavell's  Patent  Kitch- 
ener,' and  the  patent  expires,  if  the  patent  was  known  as  the  plain- 
tiff's patent,  then  anybody  else  might  make  the  thing  as  '  Flavell's 
Patent  Kitchener,'  because  Flavell's  kitchener  then  does  not  mean 
made  by  Flavell,  but  made  according  to  Flavell's  patent.  What  have 
we  got  in  this  case  ?  In  the  first  place,  the  thing  here  was  not  in- 
vented by  any  Thorley  at  all,  and  therefore  '  Thorley's  Food  '  cannot 
signify  a  food  made  according  to  Thorley's  invention.  The  invention 
is  said  to  be  by  somebody  else,  whose  recipe  is  said  to  have  been  pur- 
chased by  the  original  Thorley,  and  «  Thorley's  Food  for  Cattle  '  here, 
according  to  my  view,  does  not  mean  food  consisting  of  particular  in- 
gredients, or  made  up  according  to  a  particular  recipe,  because  no 
purchaser  would  care  about  that ;  but  '  Thorley's  Food  for  Cattle  ' 
meant  that  food  which  for  many  years  was  manufactured  at  works  be- 
longing to  Joseph  Thorley,  and  afterward  was  manufactured  by  his 
executors  carrying  on  his  business  at  the  same  works.  The  words 
'  Thorley's  Food  for  Cattle '  would  indicate,  according  to  my  view  of 
the  case,  to  a  purchaser,  this  :  You  have  always  had  a  very  good 
article  called  '  Thorley's  Food  for  Cattle  ; '  any  article  bearing  that 
name  is  to  you  a  guarantee  that  it  comes  from  the  same  place  from 
which  that  has  come  with  which  you  have  hitherto  been  well  satisfied 
and  content.  That  in  truth  is  the  meaning  and  object  and  result  of  a 
trade-mark.  That  is  what  a  trade-mark  is  ;  it  does  not  signify  what  it 
is  —  whether  it  is  a  name,  or  a  symbol,  or  a  fancy  name,  or  anything 
else.  It  indicates  this,  a  warranty  that  the  article  to  which  it  is  at- 
tached has  come  from  the  particular  manufacturer  of  the  goods  with 
which  buyers  have  been  hitherto  pleased.  '  Thorley's  Food  for  Cat- 
tle '  never  became  an  article  of  commerce  as  distinguished  from  the 
particular  manufactory  from  which  it  had  proceeded.  I  referred  in 
the  course  of  the  argument  to  a  case  as  an  illustration  which  was  the 
converse  of  this,  the  case  of  Liebig's  Extract  of  Meat  Company,  where 
the  company  wanted  to  prevent  some  defendants  from  selling  Liebig's 
extract  of  meat,  or  selling  anything  of  that  name,  the  company  hav- 
ing got  Liebig  to  assist  them  and  lend  them  his  name.  The  answer 
to  that  was :  Liebig's  extract  of  meat  has  ceased  to  be  a  thing  made 
by  Liebig,  because  Liebig  has  published  to  the  world  the  mode  by 
which  it  is  made,  and  it  has  been  made  and  manufactured  generally, 

402 


THORLEY'S  CATTLE  FOOD  CO.  V.  MASSAM. 

and  has  got  into  the  Pharmacopoeia,  into  books  of  cookery,  into  a 
dozen  places  where  a  dozen  people  can  make  it,  and  has  now  become 
as  much  known  as  if  it  were  called  '  Extract  of  Meat '  alone,  or  any- 
thing else,  and  Liebig's  extract  has  ceased  to  have  any  connection  with 
Liebig  as  the  maker  of  it  for  the  purpose  of  the  manufacturer,  and 
was  merely  the  description  of  it  as  the  article  known  to  the  medical 
world  and  other  persons  who  had  occasion  to  use  it.  That  was  the 
converse  of  this  case.  There  is  nothing  like  that  in  this  case  of 
'  Thorley's  Food  for  Cattle.'  Then  we  have  to  consider  what  was  the 
animus.  It  appears  to  me  that  that  would  be  almost  sufficient  to  dis- 
pose of  it ;  but  there  is  one  thing  that  struck  me  in  this  all  through. 
We  have  had  nothing  like  a  satisfactory  explanation  of  how  J.  W. 
Thorley's  Company  came  into  existence  ;  how  they  came  to  form 
themselves  into  a  company,  unless  it  was  that  they  thought  that 
Thorley  was  making  a  very  good  thing  ;  that  they  thought  that  Thor- 
ley's food  was  a  very  profitable  thing ;  that  it  had  got  a  very  great 
reputation,  and  that  some  of  them  would  like  to  steal  the  reputation 
which  Thorley's  article  had  acquired.  In  order  to  do  that,  they 
seem  to  have  somehow  or  other  got  into  communication  with  a  gen- 
tleman who  was  a  relation  of  the  late  Joseph  Thorley,  and  a  con- 
nection of  his  executors,  and  who  for  some  years  had  been  in  the  ser- 
vice of  Joseph  Thorley,  and  during  those  years,  according  to  his  own 
account,  which  I  take  to  be  true,  had  acquired  a  knowledge  of  the 
recipe,  and  had  acquired  the  exact  knowledge  of  the  manufacture,  but 
who  for  several  years  previous  to  the  existence  of  this  company  had 
never  had  anything  to  do  with  the  manufacture  of  food  for  cattle,  but 
was  probably  gaining  his  livelihood  in  some  other  way ;  but  having 
the  same  name  of  Thorley,  which  was  the  distinguishing  mark  of  food 
for  cattle,  he  either  tendered  himself  for  sale,  or  was  found  for  pur- 
chase by  some  person,  in  order  that  his  name  might  be  got  into  a 
joint-stock  company  limited,  for  the  sake  of  selling  these  goods.  Why 
was  that  name  got  in  there  except  for  the  purpose  of  inducing  the 
world  to  believe  that  it  was  the  same  concern,  or  that  it  was  the  Thor- 
ley, that  it  was  the  same  Thorley  whose  name  was  the  principal  charac- 
teristic of  the  name  of  the  article  ?  The  name  of  the  company,  I  can- 
not help  observing,  was  J.  W.  Thorley  &  Co.,  Limited,  and  that  J.  W. 
Thorley  &  Co.,  Limited,  is,  to  my  mind,  to  begin  with,  a  fiction,  an  in- 
tentional fiction.  The  meaning  of  J.  W.  Thorley  &  Co.,  Limited,  that 
which  it  would  convey  to  any  person's  mind,  is  that  there  was  a  part- 

403 


THORLEY'S  CATTLE  FOOD  CO.  V.  MASSAM. 

nership  of  J.  W.  Thorley  &  Co. ;  a  real  partnership,  which  had  been 
carrying  on  business  in  the  manufacture  of  this  food  for  cattle,  and 
that  for  some  reason  or  other,  such  as  we  have  seen  constantly  in  our 
experience  in  this  court,  the  partnership  had  been  minded  to  convert 
itself  into  a  limited  company  for  the  more  convenient  transaction  of 
its  business.  But  here  the  J.  W.  Thorley  was  not  a  partner.  J.  W. 
Thorley  was  employed  as  an  agent,  as  the  manager ;  and  J.  W.  Thor- 
ley's  only  connection  with  the  company,  qua  company,  is  that  he  had 
a  one  shilling  share  in  it,  the  company  itself  having  a  capital  of  £200, 
or  something  of  that  kind.  To  my  mind  that  really  would  be  ex- 
actly the  same  thing  as  if  somebody  were  to  establish  a  brewery  at 
Burton,  finding  some  one  of  the  name  of  Bass,  or  somebody  who 
would  take  the  name  of  Bass  —  because  there  is  no  law  to  prevent  a 
man  assuming  any  name  he  likes  —  and  then  calling  themselves  J. 
Bass  &  Co.,  Limited,  or  W.  Bass  &  Co.,  Limited,  and  advertising 
Bass  &  Co.'s  pale  ale.  I  really  can  see  no  distinction  between  Bass 
&  Co.'s  pale  ale  as  advertised  by  such  a  company  got  up  in  that  way? 
and  '  Thorley's  Food  for  Cattle,'  advertised  by  the  company  which 
has  procured  a  person  of  the  name  of  Thorley  to  be  connected  with 
their  company.  That  of  itself,  to  my  mind,  is  a  very  strong  thing  to 
begin  with.  And  then  next  we  have  to  look  at  the  advertisements 
and  circulars,  and  the  almanac.  First  of  all,  as  to  the  packages,  could 
anything  be  more  calculated  to  deceive  ?  Those  are  the  things  by  which 
the  company  really  influenced  customers.  It  is  said  by  the  defendants 
that  they  are  very  careful,  and  they  have  always  been  very  careful,  to 
avoid  anything  which  could  be  considered  as  indications  of  any  inten- 
tion on  their  part  to  pass  their  goods  off  as  the  others'.  If  they  had 
been  so  very  much  minded  in  that  way,  why  did  they  not  make  their 
packages  different  —  the  same  shape  and  the  same  size  it  might  be, 
because  it  might  be  convenient ;  but  why  did  they  not  put  them  in  a 
scarlet,  blue,  or  orange  and  blue  wrapper,  or  something  that  would 
have  immediately  shown  not  only  to  a  person  minutely  comparing  the 
things  together,  but  to  any  person  who  was  in  the  habit  of  having  the 
things  in  an  orange  packet,  that  it  was  a  blue  packet  ?  Why  did  they 
not  do  that,  if  they  were  minded,  as  they  say  they  were,  not  only  to 
take  care  that  their  things  should  not  be  mistaken,  but  that  the  world 
should  know  that  they  were  rival  manufacturers  ?  Then  there  is  the 
almanac  which  they  have  circulated,  and  in  which  they  put  things 
which  were  paid  for  by  Thorley  —  Dr.  Hassall's  description  and  re- 

404 


THORLEY'S  CATTLE  FOOD  CO.  V.  MASSAM. 

port,  and  things  of  that  kind,  and  other  passages  —  for  the  pur- 
pose of  implying  that  they  were  the  persons  for  whom  Dr.  Has- 
sall's  report  had  been  obtained,  and  that  Dr.  Hassall's  report  was 
a  report  on  their  manufacture.  Then  there  is  this  again  :  they  put, 
'  It  is  the  best  cattle  food  in  the  world.  Upward  of  £95,000  has 
been  awarded  to  horses  and  cattle  fed  on  Thorley's  food  for  cattle. 
It  has  gained  the  diplomas  from  the  Pennsylvania  State  Agricult- 
ural Society  and  of  the  Royal  Agricultural  Society,'  and  so  on,  all 
of  which  was  true  of  the  article  which  was  manufactured  by  Jo- 
seph Thorley,  but  was  not  true  of  the  article  which  was  manufact- 
ured by  them  ;  that  is  to  say,  their  article  had  not  received  any 
of  these  things.  They  may  say  their  article  is  the  same,  or  as 
good,  but  in  my  opinion  the  representation  is  not,  '  We  are  mak- 
ing an  article  as  good  or  the  same  as  Thorley's,  which  gained  the 
prize,'  but  '  This  is  the  thing,  we  are  the  persons  who  are  selling  the 
thing,  the  produce  of  the  manufactory,  which  has  obtained  those 
prizes.'  There  are  other  things  which  I  need  not  stop  to  dilate  upon. 
On  the  parol  evidence  I  am  satisfied,  and  I  agree  very  much  with 
what  Mr.  Townsend  said,  with  regard  to  the  witness  Stillwell,  who 
was  a  traveller  for  the  company,  and  who  went  to  people  and  said,  '  I 
come  from  Thorley's ;  Joseph  Thorley  is  dead  ;  the  persons  I  repre- 
sent are  carrying  on  the  business.'  I  have  not  the  slightest  doubt 
that,  being  well  warned  that  he  was  not  to  say  anything  which  could 
be  construed  into  a  positive  assertion  that  the  company  were  carrying 
on  the  same  business  at  the  same  premises,  or  were  the  successors  in 
business,  he  took  care  to  say  that  they  were  carrying  on  the  business 
of  manufacturing  food  for  cattle.  It  might  be  said,  it  was  true  that 
they  were  carrying  on  the  food  for  cattle  business  ;  but  the  intention 
and  the  effect  of  that,  in  my  mind,  was  to  cause  a  belief  to  be  enter- 
tained by  the  persons  to  whom  it  was  addressed,  who  all  say  they  did 
form  that  belief  from  it,  that  it  was  the  same  concern ;  that  the  com- 
pany were  carrying  on  the  same  manufactory  from  which  the  things 
used  to  be  distributed  to  the  world.  I  am  therefore  of  opinion  that 
in  this  case,  what  the  defendant  company  have  done  has  been  calcu- 
lated to  deceive,  and  1  am  bound  to  say  in  my  judgment  I  have  no 
doubt  was  from  the  first  intended  to  deceive,  the  persons  purchasing 
their  article,  into  the  belief  that  they  were  purchasing  the  article  which 
Joseph  Thorley  had  formerly  manufactured  at  the  works  which  had 
obtained  the  great  reputation  which  Thorley's  manufacture  appears  to 

405 


CARROLL  V.  ERTHEILER. 

have  obtained  from  the  purchasers  of  those  condiments.  I  am  of 
opinion  that  the  order  should  have  been  granted  very  much  in  the 
general  words  in  which  it  was  asked." 

Baggallay  and  Bramwell,  L.  JJ.,  concurred. 

669.  Carroll  v.  Ertheiler. 
1880.     C.  C.  U.  S.  E.  Dist.  Penn.     Not  reported. 

PLAINTIFF'S  bill  set  out  the  adoption  of  the  arbitrary  words 
"  Lone  Jack  "  to  denote  a  special  brand  of  tobacco  manufact- 
ured and  sold  by  him.  It  further  alleged  that  after  the  plain- 
tiff's tobacco  had  become  well  known  to  the  public  under  the 
name  "  Lone  Jack"  defendant  manufactured  and  put  into  the 
market  smoking  tobacco  in  the  shape  of  cigarettes,  under  the 
name  or  symbol  of  "  Lone  Jack  Cigarettes"  The  device  or 
figure  used  by  defendant  was  different  from  that  used  by  the 
plaintiff,  and  defendant's  name  was  conspicuously  applied. 

On  motion  for  preliminary  injunction,  Held,  that  defend- 
ant should  be  restrained  from  using  the  words  "  Lone  Jack  " 
during  the  pendency  of  the  suit. 

Per  Butler,  J.  "  The  defendant  rests  upon  a  denial,  first,  that  the 
defendant  has  used  the  trade-mark ;  and  second,  that  he  has  used  it 
as  a  designation  of '  smoking  tobacco.' 

"The  second  branch  may,  most  conveniently,  be  noticed  first. 
While  the  revenue  laws,  for  purposes  of  taxation,  distinguished  be- 
tween smoking  tobacco  and  cigarettes,  there  is,  we  believe,  no  sub- 
stantial difference.  Cigarettes  consist  of  smoking  tobacco  similar  in 
all  material  respects  to  that  used  in  pipes.  The  circumstance  that  a 
longer  '  cut '  than  that  commonly  used  in  pipes  is  most  convenient  for 
cigarettes  is  not  important ;  nor  that  the  tobacco  is  smoked  in  paper 
instead  of  pipes.  It  may  all  be  used  for  either  purpose ;  and  is  all 
embraced  in  the  term  '  smoking  tobacco.'  We  do  not  believe  the  pub- 
lic or  the  trade  draws  such  a  distinction  as  the  defendant  sets  up.  We 
have  not  overlooked  the  statements  contained  in  his  affidavits.  But 
the  method  pursued  in  obtaining  this  testimony,  generally,  does  not 
recommend  it  to  our  confidence.  The  affidavits  seem  to  have  been 
prepared  without  seeing  the  witnesses,  and  sent  over  the  country  to 
be  signed  by  those  who  might  be  found  willing  to  sign  them.  They 

406 


CONNELL  V.  REED. 

are,  generally,  similar  in  language,  and  printed.  This  method  of  ob- 
taining testimony  is  not  worthy  of  encouragement.  If  the  public  and 
trade  draw  such  a  distinction,  and,  therefore,  do  not  suppose  the  de- 
fendant's cigarettes  to  be  made  of  the  plaintiff's  tobacco  (and  the  de- 
fendant so  understands),  why  does  he  adopt  the  designation  by  which 
this  tobacco  is  familiarly  known,  and  persist  in  using  it  ? 

"The  dominating  characteristic  of  the  plaintiff's  trade-mark  is  the 
name,  '  Lone  Jack.'  His  tobacco  has  come  to  be  known  and  de- 
scribed by  this  name  throughout  the  country,  to  such  an  extent  that 
the  accompanying  device  has  ceased  to  be  important,  if  it  ever  was  so 

—  doubtless  rarely  observed,  and   slightly  remembered.     At  home 
and  abroad,  to  the  trade  and  the  public,  it  is  familiarly  known  as 
<  Lone  Jack ; '  and  is  thus  designated  as  the  plaintiff's  manufacture, 
by  purchasers  and  sellers. 

"  The  defendant's  application  of  this  name  to  his  smoking  tobacco  is 
an  adoption  and  use  of  the  essential  part  of  the  plaintiff's  trade-mark. 
Surrounding  it  with  a  different  device  signifies  nothing  to  the  public 

—  who  attach  no  importance  to  the  device  of  the  plaintiff.     The  de- 
fendant's name  upon  the  cigarettes,  if  recognized  (and  it  would  not  be 
without  close  inspection),  would  not  inform  the  public  that  the  to 
bacco  is  not  of  the  plaintiff's  manufacture." 

670.  ConneU  v.  Reed. 

1880.     S.  C.  Mass.       Rep. 

A  BILL  in  equity  was  brought  to  restrain  the  defendants 
from  infringing  an  exclusive  right  claimed  by  the  plaintiff  in 
the  words  "  East  Indian"  used  with  the  word  "  remedy  "  or 
"  remedies "  as  a  trade-mark  upon  bottles  of  medicine.  It 
appeared  that  the  plaintiff  adopted  these  words  to  denote  and 
to  indicate  to  the  public  that  the  medicines  were  used  in  the 
East  Indies  and  that  the  formula  for  them  was  prepared  there, 
neither  of  which  was  the  fact.  Held,  that  to  maintain  the  bill 
under  these  circumstances  would  be  to  lend  the  aid  of  the 
court  to  a  scheme  to  defraud  the  public. 

Per  Gray,  C.  J.  "Although  the  master  reports  that  there  was  no 
evidence  that  any  other  person  than  the  plaintiffs  or  their  agents  had 
ever  used  these  words  in  connection  with  the  manufacture  and  sale  of 

407 


ROYAL  BAKING  POWDER  CO.  V.  McQUADE. 

medicines,  it  is  at  least  doubtful  whether  words  in  common  use  as  des- 
ignating a  vast  region  of  country  and  its  products  can  be  appropri- 
ated by  any  one  as  his  exclusive  trade-mark,  separately  from  his  own 
or  some  other  name  in  which  he  has  a  peculiar  right.  But  the  con- 
clusive answer  to  this  suit  is  that  the  master  has  found,  upon  evidence 
which  appears  to  us  to  be  satisfactory,  that  the  plaintiffs  have  adopted 
and  used  these  words  to  denote,  and  to  indicate  to  the  public,  that  the 
medicines  were  used  in  the  East  Indies,  and  that  the  formula  for  them 
was  obtained  there,  neither  of  which  was  the  fact.  Under  these  cir- 
cumstances, to  maintain  this  bill  would  be  to  lend  the  aid  of  this  court 
to  a  scheme  to  defraud  the  public." 


671.  Royal  Baking  Powder  Co.  v.    McQuade  et  al. 
1880.     C.  C.  U.  S.      Not  yet  reported. 

COMPLAINANT  had  used  and  acquired  a  right  of  property 
in  the  word  "  Royal "  as  a  trade-mark  for  baking  powder  ; 
defendants,  long  after  complainant's  goods  had  acquired  ce- 
lebrity in  the  market,  made  use  of  the  word  "Loyal "  upon 
the  same  class  of  goods  and  simulated  complainant's  label. 

On  motion  for  preliminary  injunction,  Held,  that  the  word 
"  Royal "  was  a  good  trade-mark,  and  that  the  use  by  defend- 
ants of  the  word  "  Loyal  "  should  be  enjoined  pendente  lite. 

Per  Blodgett,  J.  "  I  think  that  it  is  very  manifest  there  was  an 
intention  on  the  part  of  the  manufacturer  of  this,  the  defendants' 
powder,  to  obtain  the  benefit  of  whatever  labor  and  effort  the  com- 
plainant has  used  to  give  reputation  and  character  to  his  goods.  There 
is  the  adoption,  in  the  first  place,  of  a  word  which  is  substantially 
idem  sonans  with  the  word  '  Royal.'  The  words  are  not,  of  course, 
precisely  the  same,  but  when  rapidly  spoken  by  people  not  accus- 
tomed to  notice  the  nice  distinctions  of  speech,  they  might  be  taken 
for  the  same  word.  There  is  also  the  adoption  of  a  label  which  in 
colors,  in  its  design,  and  collocation  of  the  letters,  and  even  of  the 
vignette,  and  in  all  the  characters  which  strike  the  eye,  is  so  identical 
with  that  of  the  plaintiff,  that  it  confirms  the  impression  which  would 
be  created  by  the  use  of  the  general  name,  or  generic  term,  that  there 
was  an  intention  on  the  part  of  the  manufacturer  of  defendants'  goods 
to  avail  himself  of  the  reputation  of  the  plaintiff.  It  is  true  that  the 

408 


SINGER  MANUFACTURING  CO.  V.  BRILL. 

defendants  have  announced  on  the  face  of  their  label  that  this  is  not 
the  '  Royal,'  but  that  is  in  a  place  where  it  would  perhaps  be  the  last 
thing  that  would  be  read,  and  that  after  the  goods  had  been  obtained 
and  paid  for,  and  it  is  after  all  a  reservation  which  would  avail  the 
defendants  nothing.  It  is  an  explanation  which  comes  too  late  in  the 
transaction  to  really  exculpate  the  defendants.  The  make-up  gener- 
ally of  the  package  is  so  similar,  and  the  imitation  of  the  name  is  so 
similar,  as  to  create  naturally,  and  be  calculated  to  create,  the  impres- 
sion upon  people  who  are  not  particular  in  reference  to  terms,  that 
they  were  buying  the  '  Royal '  when  they  were  buying  the  '  Loyal.' 
The  class  of  persons  who  would  naturally  be  sent  to  a  grocery  store 
to  buy  this  class  of  goods  would  be  such  as  might  be  imposed  upon 
readily  by  the  similarity  of  these  two  names." 


672.  Singer  Manufacturing  Co.  v.  Brill. 

1880.     Superior  Court  of  Cincinnati.     Not  yet  reported. 

THIS  was  an  action,  under  the  code  of  the  State  of  Ohio, 
for  an  injunction  and  an  account.  Three  causes  of  action  were 
recited.  Plaintiff  alleged  that  it  was  a  corporation  engaged 
in  the  manufacture  and  sale  of  sewing-machines,  which  ma- 
chines were  known  (1.)  by  the  name  or  designation  "  SlNGER," 
and  (2.)  by  their  appearance ;  that  defendant  had  violated  its 
rights  by  selling  sewing-machines  of  similar  appearance,  under 
the  name  of  "  ENGLISH  SINGER  SEWING-MACHINES." 

The  evidence  tended  to  show  that  the  defendant  had  never 
actually  attached  the  word  "  Singer  "  to  his  machines,  and  that 
he  had  never  directly  represented  in  any  way  that  they  were 
made  by  the  plaintiff. 

The  court  (Foraker,  J.)  said  :  "  There  are  but  three  general  ques- 
tions presented.  The  first  is  :  whether  or  not  the  word  '  Singer,'  as 
it  has  been  used  by  the  plaintiff  and  its  predecessors,  denotes  the 
manufacturer,  or  is  a  word  of  description  only. 

"  The  second  question  is,  as  to  whether  or  not,  assuming  that  the 
plaintiff  has  trade-mark  or  trade  name  rights  in  the  use  of  the  name 
Singer,  the  defendant  has  infringed  them. 

"  The  third  is,  as  to  the  right  of  the  plaintiff  to  enjoin  the  defendant 

409 


SINGER  MANUFACTURING  CO.  V.  BRILL. 

from  dealing  in  machines  made  in  imitation,  as  to  the  form,  appear- 
ance, ornamentation,  etc.,  of  the  plaintiff's  machines. 

"  The  first  of  these  questions  is  a  question  of  fact  to  be  determined 
from  the  evidence." 

After  examining  the  question  at  great  length  the  court  con- 
cludes : 

"  From  these  considerations,  united  with  the  direct  evidence  offered 
by  the  plaintiff  in  support  of  its  claim  that  its  machines  are  not  manu- 
factured according  to  any  one  system,  pattern,  or  principle ;  and  that 
the  word  Singer  was  always  used  by  it  and  its  predecessors  to  desig- 
nate that  they  were  the  manufacturers,  I  come,  as  I  have  said,  without 
hesitation,  to  the  conclusion  that  the  decided  weight  of  the  evidence 
is  with  the  plaintiff  on  this  question. 

"  In  this  review  of  the  evidence  I  have  omitted  to  make  mention  of 
many  things  confirmatory  of  this  conclusion,  because  it  is  a  matter  of 
great  tediousness  to  refer  to  all,  and  I  deem  it  sufficient  to  name  only 
enough  to  show  the  ground  upon  which  my  conclusion  rests. 

"  If  I  were  to  refer  to  any  other,  however,  it  would  be  to  the  fact 
established  by  all  the  witnesses  in  the  case,  those  for  the  defendant  as 
well  as  those  for  the  plaintiff,  that  if  an  order  were  to  be  received 
simply  calling  for  a  Singer  machine,  it  could  not  be  filled  until  there 
had  been  an  explanation  specifying  what  kind  of  a  machine  was 
wanted.  This  seems  to  have  been  regarded  as  a  vital  point  on  this 
branch  of  the  English  cases  that  have  been  referred  to.  And  justly 
so,  since  it  shows  that  by  the  word  Singer  can  not  be  meant  any  par- 
ticular machine  or  kind  of  machine." 

Concerning  the  second  point,  after  referring  to  certain  similarities 
of  little  importance,  his  honor  writes  : 

"  The  word  '  Singer '  nowhere  appears  upon  the  machines  sold  by 
the  defendant,  but  in  all  his  cards,  circulars,  and  newspaper  adver- 
tisements he  represents  them  to  be  '  English  Singer  Sewing-Ma- 
chines, manufactured  by  the  Williams  Manufacturing  Company,  at 
Montreal,  Canada.'  ....  Can  there  be  infringement  of  a  trade 
name  by  merely  advertising  an  article  by  the  name  ....  without 
selling  or  offering  it  with  the  name  attached. 

"  However  it  may  be  in  the  case  of  a  trade-mark,  as  distinguished 
from  a  trade  name,  I  am  satisfied  both  upon  reason  and  authority  that 
there  may  be  infringement  in  that  way  of  a  trade  name. 

"  I  don't  know  how  I  can  better  show  this  authority  and  the  reason 

410 


SINGER  MANUFACTURING  CO.  V.  BRILL. 

of  it  than  by  quoting  from  the  opinion  of  the  Lord  Chancellor  in  the 
case  against  Wilson,  3  App.  Cases  L.  R.  389,  where  he  says,  speak- 
ing upon  this  point : 

"  '  My  Lords,  I  am  unable  to  see  that  this  makes  any  difference  in 
point  of  principle.  It  may  well  be  that  if  an  imitated  trade-mark  is 
attached  to  the  article  manufactured,  there  will,  from  that  circum- 
stance, be  the  certainty  that  it  will  pass  into  every  hand  into  which  the 
article  passes,  and  be  thus  a  continuing  and  ever-present  representa- 
tion with  regard  to  it ;  but  a  representation  made  by  advertisements 
that  the  articles  sold  at  a  particular  shop  are  articles  manufactured  by 
A.  B.  (if  that  is  the  legitimate  effect  of  the  advertisements,  which  is  a 
separate  question)  must,  in  my  opinion,  be  as  imperious  in  principle, 
and  may  possibly  be  quite  as  injurious  in  operation,  as  the  same  rep- 
resentation made  upon  the  articles  themselves.' 

"  The  next  question  here  presented  is  that  suggested  by  the  paren- 
thetical sentence  of  the  Lord  Chancellor,  as  above  quoted,  viz. :  What 
is  the  effect  of  the  advertisements  made  by  the  defendant  ? 

"  It  is  earnestly  insisted  by  him  that  his  advertisements  and  repre- 
sentations are  of  such  a  character  as  to  preclude  all  possibility  of  de- 
ception ;  .that  every  one  reading  them  is  thereby  apprised  distinctly. 
and  plainly  that  the  machines  dealt  in  by  him  are  not  the  machines 
made  by  plaintiff;  and  it  is  claimed  that  this  was  especially  intended 
to  be  made  to  appear  in  order  that  defendant  might  have  the  benefit 
of  the  superiority  which  he  claims  for  his  machines. 

"  There  is  no  question  but  that  it  does  appear  from  defendant's  ad- 
vertisements that  the  plaintiff  is  not  the  maker  of  them,  and  that  his 
machines  are  called  '  English  Singers,'  and  there  is  no  question  either 
but  that,  to  one  informed,  these  statements  would  be  sufficient  to  im- 
part all  that  is  claimed. 

"  But  we  must  remember  the  fact,  common  to  the  knowledge  of  all, 
that  the  great  mass  of  people  likely  to  buy  and  use  these  machines 
are  not  so  informed.  The  most  that  such  persons  know  is  that  the 
machines  called  Singer  Machines  are  what  they  want,  and  conse- 
quently, when  they  find  the  word  Singer  they  are  not  apt  to  stop  and 
read  what  accompanies  it ;  but  whether  they  are  or  not,  the  fact  that 
they  must  do  so  to  avoid  being  misled  is  sufficient.  The  defendant 
has  no  right  to  put  them  to  that  trouble  or  the  plaintiff  to  that  risk. 

"But  again,  if  such  advertisements  do  not  deceive,  if  they  are  not  in- 
tended to  deceive,  as  defendant  claims,  why  should  they  be  made  ?  If 

411 


LAWRENCE  MANUF.  CO.  V.  LOWELL  HOSIERY  MILLS. 

defendant  wants  to  distinguish  his  machines  from  the  plaintiff's  why 
use  a  word  that  can  have  no  other  effect  than  to  make  an  explanation 
necessary  ?  It  would  seem  easier  for  the  defendant  to  guard  and  pro- 
tect the  reputation  of  his  machine  against  what  he  claims  to  be  the 
inferior  machine  of  the  plaintiff  if  he  avoided  the  use  of  the  word 
altogether.  But  however  this  may  be,  the  authorities  are,  without 
exception,  that  such  use  of  the  word  Singer  by  the  defendant,  as  he  is 
shown  to  be  making,  is  an  infringement  upon  the  rights  of  the  plain- 
tiff in  its  use  as  a  trade  name,  assuming,  as  I  have  found,  that  the 
plaintiff  has  such  rights." 

The  plaintiff's  contention,  that  it  had  a  right  of  property  in  the 
"  form,  appearance,  and  ornamentation  "  of  its  machine,  and  that  this 
right  had  been  infringed  by  the  defendant,  was  also  sustained. 

The  injunction  restrained  defendant  from  using  the  name  "  Singer," 
either  alone  or  in  combination  with  other  words,  in  advertisements  of 
his  machine,  and  from  selling  sewing-machines  having  the  external 
appearance,  shape,  or  ornamentation  of  the  machines  of  plaintiff's  man- 
ufacture. 


673.    Lawrence    Manufacturing   Co.    v.    Lowell    Hosiery 

Mills. 

1880.     S.  C.  Mass.  —  10  Rep.  809. 

PLAINTIFFS  used  as  a  trade-mark  upon  a  certain  grade  of 
hosiery  of  their  manufacture  a  certain  device  with  the  figures 
523  under  it ;  these  goods  were  known  and  called  for  as 
"  523's."  The  defendants  afterwards  used  as  a  trade-mark 
upon  goods  of  their  manufacture  a  device  somewhat  resem- 
bling that  of  the  plaintiffs'  and  the  figures  523  printed  in  the 
same  kind  of  type,  and  placed  as  to  the  other  parts  of  the  de- 
vice in  the  same  relative  position  as  the  plaintiffs'. 

Held,  that  the  plaintiffs  had  established  their  right  to  the 
exclusive  use  of  their  device ;  that  the  numerals  523  were  an 
essential  part  thereof ;  that  the  defendants  had  violated  the 
plaintiffs'  right  by  the  use  of  an  imitation  of  said  trade-mark, 
and  had  thereby  deceived  the  public  and  injured  the  plaintiffs ; 
and  that  the  plaintiffs  were  entitled  to  the  relief  prayed  for  in 
their  bill. 

412 


LAWRENCE  MANUF.  CO.  V.  LOWELL  HOSIERY  MILLS. 

Per  Colt,  J.  "  The  statutes  of  this  commonwealth  protect  a  per- 
son who  uses  any  peculiar  name,  letters,  marks,  device,  or  figures 
upon  an  article  manufactured  or  sold  by  him,  to  distinguish  it  as  an 
article  manufactured  by  him.  "  Gen.  Stat  c.  56,  §  1. 

"  It  is  said  that  there  can  be  no  exclusive  right  to  use  marks,  fig- 
ures, or  letters  which  are  intended  merely  to  indicate  the  quality  of  the 
fabric  manufactured,  as  distinguished  from  those  marks  which  are  in- 
tended to  indicate  its  origin,  because  one  has  no  right  to  appropriate 
a  sign,  or  symbol,  or  mark  which,  from  the  nature  of  the  fact  it  is 
used  to  signify,  others  may  use  with  equal  truth,  and  therefore  have 

an  equal  right  to  employ  for  the  same  purpose And  in  Canal 

Company  v.  Clark,  ....  (327,)  it  was  declared  by  Strong,  J.,  that 
no  one  can  claim  protection  for  the  exclusive  use  of  a  mark  which 
would  practically  give  him  a  monopoly  in  the  sale  of  any  goods  other 

than  those  of  his  own  manufacture Letters  and  figures  when 

used  only  for  the  purpose  of  denoting  quality  are,  from  the  very  nat- 
ure of  the  use,  incapable  of  exclusive  appropriation.  These  consider- 
ations would  be  decisive,  if  the  plaintiffs  here  claimed  the  exclusive 
right  to  the  numerals  '  523 '  when  used  only  to  indicate  the  quality 
and  not  with  reference  to  the  origin  of  the  goods.  But  such  is  not 
the  plaintiffs'  position.  Their  claim  is,  that  the  purpose  of  using 
those  figures  in  connection  with  the  other  parts  of  their  trade-mark 
was  to  aid  the  buyer  in  distinguishing  their  goods  from  similar  goods 
made  and  sold  by  others. 

"  A  trade-mark  when  applied  to  manufactured  articles  may  well 
consist  of  the  name  and  address  of  the  manufacturer,  with  the  addition 
of  some  peculiar  device  or  curious  figure,  so  disposed  as  to  attract 
attention,  and  advertise  more  effectually  the  origin  of  the  article  to 
which  it  is  attached.  And  it  may  be  that  mere  numerals,  or  letters 
of  the  alphabet,  can  be  combined  and  printed  in  such  unusual  and  pe- 
culiar forms  that  the  result  would  be  quite  sufficient  for  use  as  a  trade- 
mark. In  Boardman  v.  Meriden  Britannia  Co.  .  .  .  (302)  it  was 
said  that  if  numbers  were  once  shown  to  have  been  used  for  the  pur- 
pose of  indicating  origin  or  ownership,  and  to  have  had  that  effect,  it 
would  not  be  easy  to  assign  a  reason  why  they  should  not  receive  the 
same  protection  as  trade-marks.  The  numbers  in  that  case,  however, 
were  held,  by  virtue  of  their  connection,  to  form  an  important  part  of 
the  trade-mark  itself. 

"  It  is  not  necessary  that  the  resemblance  produced  should  be  such  as 

413 


MORGAN  SONS  CO.  V.  TEOXELL. 


would  mislead  an  expert,  or  such  as  would  not  be  easily  detected  if 
the  original  and  the  spurious  were  seen  together.  It  is  enough  that 
such  similitude  exists  as  would  mislead  an  ordinary  purchaser." 


674.  Morgan  Sons  Co.  v.  Troxell  et  al. 

1880.     Supreme  Court  of  New  York,  General  Term:  before  Davis,  C.  J., 
and  Brady  and  Barrett,  JJ.     Not  yet  reported. 

COMPLAINANT  manufactured  a  scouring  soap,  which  it  put 
up  in  silver  foil  paper  with  a  blue  band,  the  band  being  car- 
ried around  the  cake  lengthwise  ;  the  defendants  put  up  a 
similar  article  in  silver  foil  paper  with  a  blue  band  which  was 
passed  around  the  sides  of  the  cake.  Defendants'  band  was 
broader  than  complainants',  and  their  cake  somewhat  differ- 
ent in  size  and  shape ;  the  color  of  the  paper  and  brands  were 
substantially  the  same.  The  following  cuts  illustrate  the 
points  of  resemblance  between  the  two  cakes  :  — 


BLUE. 


SILVER. 


Complainants'  Cake. 


Defendants'  Cake. 


The  words  upon  the  bands,  which  were  employed  as  labels, 
were  entirely  different.  Held,  that  complainants'  rights  had 
been  violated,  and  that  it  was  entitled  to  an  injunction. 

Per  Barrett,  J.  "  My  impressions  upon  the  argument  of  this  case 
were  that  the  referee  had  gone  too  far.  There  seemed  to  be  con- 
siderable dissimilarity  between  the  respective  packages  of  '  Sapolio  ' 
and  '  Pride  of  the  Kitchen '  submitted  for  our  examination.  It  did 
not  appear  probable  that  any  person  of  intelligence  could,  even  upon 
a  casual  inspection,  mistake  the  one  for  the  other.  Upon  the  one, 

414 


MORGAN  SONS  CO.  V.  TROXELL. 

*  Enoch  Morgan's  Sons'  Sapolio,'  printed  in  gilt  letters,  met  the  eye ; 
upon  the  other,  '  Troxell's  Pride  of  the  Kitchen  Soap.'  Indeed,  the 
principal  similarity,  aside  from  the  form  and  size  of  the  cake,  was  the 
wrapper  of  tinfoil  paper  encircled  by  a  band  of  ultramarine  blue. 
The  further  question  suggested  itself  to  my  mind,  Could  the  plaintiffs 
appropriate  this  peculiar  combination  of  tinfoil  paper  with  an  ultra- 
marine blue  wrapper  and  gilt  letters  printed  thereon,  and  by  applying 
it  to  scouring  soap  secure  a  trade-mark  therein  ?  A  careful  exam- 
ination of  the  evidence  and  further  reflection  have  removed  these  im- 
pressions, and  led  me  to  the  conclusion  that  the  learned  referee's 
judgment  was  not  only  just,  but  sound  in  law.  Whatever  there  is  of 
dissimilarity  in  the  two  articles  is  but  seeming.  While  there  is  an 
almost  ostentatious  display  of  variation  in  matters  not  likely  to  attract 
the  attention  of  the  casual  purchaser,  there  is  substantial  similarity 
in  the  picture  to  which  the  eye  has  become  accustomed.  In  this  con- 
nection, we  must  not  lose  sight  of  the  character  of  the  article,  the  use 
to  which  it  is  put,  the  kind  of  people  who  ask  for  it,  and  the  manner 
in  which  it  is  ordered.  Very  broad  scene-painting  will  deceive  an 
ignorant,  thoughtless,  or  credulous  domestic,  looking  for  an  article  in 
common  and  daily  use,  and  of  no  particular  interest  to  her  person- 
ally. The  same  kind  of  deception  would  be  instantly  detected  by 
an  intelligent  woman  of  the  world  looking  for  her  favorite  perfume, 
soap,  or  dentifrice,  or  by  a  man  of  luxurious  tastes  inquiring  for  some 
special  brand  of  champagne.  Now,  the  evidence  in  the  case  is  clear 
and  abundant  that  the  '  Pride  of  the  Kitchen '  was  sold  by  many 
grocers  as  '  Sapolio,'  and  that  many  housekeepers  were  actually  de- 
ceived. Nor  can  there  be  any  doubt  (we  regret  to  say)  that  the 
'  Pride  of  the  Kitchen'  was  delivered  by  the  defendants  to  these  gro- 
cers with  the  intent  that  it  should  be  sold  as  '  Sapolio.'  It  was  thus 
the  defendants'  purpose  to  take  advantage  of  the  market  secured 
by  the  industry  of  the  plaintiffs  and  their  predecessors,  and  by  a 
large  expenditure  of  time  and  money.  They  thus  determined,  by 
selling  their  goods  as  the  goods  of  the  plaintiffs,  to  build  up  a  busi- 
ness in  scouring  soap  upon  their  neighbors'  labor  and  capital.  It 
would  be  a  reproach  to  the  administration  of  justice  if  the  execution 
of  this  purpose  could  not  be  checked. 

"  It  is  said  that  the  plaintiffs  cannot  monopolize  the  use  of  tinfoil 
nor  of  blue  paper.  This  is  quite  true,  but  it  does  not  meet  the  ques- 
tion. The  plaintiffs  do  not  seek  to  monopolize  tinfoil  nor  blue  paper. 

415 


MOKGAN  SONS  CO.  V.  TKOXELL. 

Any  one  may  use  these  articles,  and  use  them  freely.  They  may  be 
applied  to  aay  other  soap.  They  may  even  be  applied  to  scouring 
soap.  All  that  the  plaintiffs  ask  is  that  they  shall  not  be  applied  to 
scouring  soap  in  such  form  and  manner,  with  such  peculiar  relations 
to  each  other  and  to  the  cake,  as  to  deceive  that  special  public  which 
relies  upon  similar  methods  long  since  adopted  by  the  plaintiffs  aiid 
their  predecessors.  > 

"  A  trade-mark  is  not  necessarily  limited  to  a  device  or  name. 
Nor  are  we  prepared  to  admit  that  a  party  cannot  be  protected  in 
the  combined  arrangement  of  form  and  distribution  of  color,  with 
which  his  goods  are  put  up  and  placed  before  the  public,  especially 
where  there  is  a  fraudulent  purpose,  and  where  customers  have,  in 
fact,  been  deceived.  If  the  plaintiffs  cannot  be  protected  in  a  ' .  .  .  . 
pressed  and  stamped  cake  enclosed  in  a  tinfoil  wrapper,  encircled  with 
an  ultramarine  blue  band,  printed  in  gold,'  neither  can  they,  though 
other  and  still  more  novel,  distinctive,  and  striking  forms  and  colors 
be  added.  There  might  be  double  and  treble  bands  of  various  colors 
and  sizes,  crossing  each  other  in  different  places,  with  the  margins 
cut  or  stamped  in  different  shapes  and  styles.  Yet,  if  the  defendants' 
contention  be  well  founded,  the  plaintiffs  could  not  be  protected 
against  their  fraudulent  reproduction.  According  to  this  doctrine,  it 
is  only  necessary  for  the  dishonest  trader  to  avoid  the  use  of  some 
special  word  or  device,  to  which  the  technical  name  trade-mark  has 
been  given,  and  to  gain  his  piratical  end,  by  imitating  everything 
which  really  conveys  to  the  public  belief  in  the  genuineness  of  the 
article  sought.  It  must  have  been  this  shallow,  as  well  as  unworthy 
idea,  which  was  in  Troxell's  mind,  when  he  declared  his  purpose  of 
imitating  '  Sapolio  '  as  closely  as  possible,  without  absolutely  making 
himself  liable. 

"  The  law  of  trade-marks  has  been  gradually  expanding  so  as  to 
meet  just  such  cases.  The  courts,  in  a  long  and  unbroken  line  of  de- 
cisions, have  endeavored  to  uphold  and  enforce  commercial  morality, 
and  have  afforded  their  protection  to  honest  enterprise  and  skill.  It 
will  not  be  necessary  to  go  over  these  cases.  They  have,  in  fact,  be- 
come too  numerous  for  extended  analysis It  will  be  suffi- 
cient to  state  the  general  result  ....  so  far  as  may  be  applicable 
to  the  case  at  bar.  We  deem  it,  then,  to  be  well  settled  upon  author- 
ity, that  to  justify  the  interference  by  injunction  of  a  court  of  equity, 
it  is  sufficient  that  there  is  a  fraudulent  intention  of  palming  off  the 

416 


MORGAN  SONS  CO.  v.  TBOXELL. 

defendant's  goods  as  those  of  the  plaintiff's,  and  that  such  intention  is 
being  carried  into  execution. 

"  Caswell  v.  Davis  [289]  is  supposed,  by  the  appellants,  to  con- 
flict with  this  position,  but  we  think  without  reason. 

"  All  that  was  held  in  that  case  was,  that  there  can  be  no  trade- 
mark in  words  or  phrases  in  common  use,  which  merely  denote  the 
character,  kind,  quality,  and  composition  of  an  article.  Consequently, 
the  name  '  Ferro-Phosphorated  Elixir  of  Calisaya  Bark '  could  not 
be  protected.  But  there  was  no  suggestion  that  the  defendant  would 
have  been  permitted  to  palm  off  upon  the  public  his  own  preparation 
of  '  Ferro-Phosphorated  Elixir  of  Calisaya  Bark '  as  that  of  the 
plaintiffs,  had  the  latter  given  their  preparation  any  name  exclusively 
indicative  of  origin  or  maker.  If  the  plaintiffs  there  had  called  their 
medicine  '  Caswell's  Ferro-Phosphorated  Elixir  of  Calisaya  Bark,'  or 
'  Caswelline,'  the  defendant  certainly  would  not  have  been  permitted 
to  palm  off  his  elixir  as  that  thus  characterized.  Nor  would  he  have 
been  permitted,  by  the  imitation  of  Caswell's  labels,  signs,  marks,  or 
other  symbols,  to  effect  the  same  purpose.  The  Caswell  case  simply 
applies  to  the  well-known  doctrine,  that  a  trade-mark  cannot  consist 
of  anything  which  merely  denotes  the  name  or  quality  of  the  article, 
and  that,  as  was  said  by  Judge  Duer,  in  the  Amoskeag  case,  2  Sand. 
609,  '  it  is  not  enough  that  the  public  may  be  misled,  or  has  been 
misled.  As  already  intimated,  the  resemblance  must  arise  from  the 
imitation  or  adoption  of  those  words,  marks,  or  signs,  which  the  per- 
son first  employing  them  had  a  right  to  appropriate,  as  indicating  the 
true  origin  or  ownership  of  the  article  or  fabric  to  which  they  are  at- 
tached.' It  does  not  disturb  the  rule,  that  a  trade-mark  may  consist 
of  anything  —  marks,  forms,  symbols  —  which  designates  the  true 
origin  or  ownership  of  the  article 

"  The  true  rule  is  well  stated  in  the  late  English  case  of  Mitchell  v. 
Henry  (43  Law  Times  N.  S.  186).  There  the  plaintiff's  trade-mark 
consisted  of  '  a  white  selvage  on  each  side  of  the  piece,  having  a  red 
and  white  mottled  thread  interwoven  the  full  length  of  the  selvage 
between  the  edge  of  the  piece  and  the  edge  of  the  selvage.'  The 
goods  sold  by  the  defendant  had  '  a  black  or  very  dark  selvage,  the 
plaintiff's  being  white  or  nearly  so  ;  and  the  defendant's  had  an  inter- 
woven thread  made  up  in  their  goods,  composed  of  red,  white,  and 
yellow  strands-  placed  at  the  edge  of  the  piece  between  the  piece  and 
the  selvage.'  Upon  that  state  of  facts,  Lord  Justice  James  observed  : 
27  417 


MORGAN  SOXS  CO.  V.  TROXELL. 

'  The  master  of  the  rolls  seems  to  me  to  have  considered  that  when 
he  had  satisfied  himself,  on  the  examination  of  the  things  before  him> 
that  the  twisted  thread  in  the  defendant's  selvage  was  in  a  position 
different  from  that  of  the  plaintiff's,  and  that  the  plaintiff's  selvage 
could  not  be  said  to  be  white,  then  that  determines  the  question.  I 
am  bound  to  say,  that  to  me  the  question  is  not  whether  the  selvage 
is  white,  but  whether  it  was  what  the  trade  knew  as  white  selvage  — 
whether  anybody  connected  with  the  trade  could  have  any  doubt 
whatever  as  to  what  was  meant  by  white  selvage.  Then,  it  is  not  at 
all  conclusive  to  my  mind  whether  the  position  of  the  defendant  is 
the  same  or  different  from  the  position  of  the  plaintiffs.  It  resolves 
itself  into  the  old  question,  which  has  always  been  the  question  to  be 
determined  in  these  cases,  "  Are  the  defendants,  not  in  words,  but  by 
acts,  and  by  something  on  the  face  of  the  articles,  representing  their 
goods  as  being  the  goods  of  the  plaintiffs'?  "  That  is  to  say,  "Are  they 
using  something  which  is  calculated  to  pass  off"  their  goods  as  the  goods 
of  the  plaintiffs  ?"'.... 

"  The  fact  that  the  imitation  is  but  partial  cannot  avail  the  defend- 
ants. The  question  is,  whether  such  a  general  resemblance  remains 
as  is  designed  to  mislead  the  public  (the  Amoskeag  case),  and  of  that, 
as  we  have  seen,  there  can  be  no  doubt.  It  all  comes  to  this,  that  as 
was  said  in  Perry  v.  Truefitt  [73],  'a  man  is  not  to  sell  his  goods 
under  the  pretence  that  they  are  the  goods  of  another.'  The  law 
does  not  limit  the  form  of  the  pretence  ;  that  depends  upon  the  facts 
of  each  particular  case.  Here  that  element  is  clearly  present,  both  in 
the  picture  presented  to  the  public  eye  and  in  the  facts  disclosed  by 
the  witnesses.  The  fraud,  for  such  it  was,  was  long  planned,  and  its 
execution  proceeded  by  regular  and  steadily  advancing  steps.  When 
it  was  found  that  bars  of  soap  were  unsatisfactory,  a  pressed  and 
stamped  cake  was  resorted  to.  Then  we  have  the  polished  pan  and 
the  face  reflected  therein,  with  the  variation  of  a  monkey  for  a  man. 
Then  came  the  various  colored  bands,  none  of  which  were  found  to 
answer  the  fraudulent  purpose,  culminating  at  last  in  the  plaintiff's 
ultramarine  blue.  What  was  done  was  done  artfully,  with  a  view  to 
reach  thoughtless  and  ignorant  buyers,  and  yet  to  evade  the  law  by 
an  apparent  exhibition  of  mere  rivalry.  It  was  also  done  srhewdly, 
by  enlisting  the  retail  grocers  through  the  bait  of  reduced  prices  and 
increased  profits,  thus  making  allies  of  these  men  for  the  general  dif- 
fusion of  direct  misrepresentation.  It  will  not  do  to  call  this  enter- 

418 


THE  APOLLINAKIS  CO.  V.  MOORE. 

prise  and  energy,  nor  to  stigmatize  the  demand  for  protection  against 
such  practices  as  an  effort  to  limit  legitimate  competition  and  to  pro- 
mote monopoly. 

"  We  find  no  error  in  the  rulings  of  the  learned  referee  upon  any  of 
the  other  questions  presented,  and  we  think  that  the  judgment  should 
therefore  be  affirmed,  with  costs." 


675.  The  Apollinaris  Co.  Limited  v.  Moore. 
1880.     C.  C.  U.  S.  E.  D.  of  Pa. :  before  Butler,  J.     Not  reported. 

COMPLAINANT  being  the  lessee  of  a  certain  mineral  spring, 
known  as  the  "  Apollinaris  Spring,"  brought  suit  for  an  injunc- 
tion against  the  defendant,  to  restrain  the  use  of  the  word 
"  Apollinaris  "  in  connection  with  the  sale  of  water  compounded 
by  him. 

It  was  contended  on  behalf  of  the  defendant  that  complain- 
ant had  no  standing  in  a  court  of  equity  by  reason  of  its  having 
fraudulently  sold  the  water  as  a  natural  water  when  it  was  in 
fact  an  artificial  water. 

Held,  that  it  appeared  from  the  evidence  that  the  water 
came  from  the  Apollinaris  spring,  and  that  the  statement  that 
it  was  a  natural  product  was  substantially  true  ;  that  the  com- 
plainant's rights  had  been  infringed,  and  that  an  injunction 
should  be  issued. 

419 


INDEX. 


NOTE.  —  The  numbers  refer  to  the  numbers  of  the  cases. 

"A"  PENS,  568. 
ABANDONMENT 

of  trade-mark  by  dismissal  of  suit  for  injunction,  230. 

not  established  by  other  persons  having  copied  some  details,  367. 
by  non-claim,  437. 

by  adoption  of  a  new  mark,  513,  628. 
by  disuse,  590. 

injunction  granted  to  restrain  infringement  after,  125. 
"  A.  C.  A."  COTTON  TICKINGS,  100. 
ACCOUNT  OF  PROFITS 

given,  though  persons  other  than  the  plaintiff  interested  in  the  mark, 
196,  243. 

though  defendants  ignorant  even  of  the  plaintiff's  existence,  204. 
only  after  the  defendant  was  aware  of  the  prior  ownership,  213. 
only  in  respect  of  goods  actually  sold,  333. 
not  given  where  plaintiff's  user  short,  234. 

where  defendant  had  acted  bond  fide,  235,  608. 
where  plaintiff  had  delayed,  244,  251,  384,  500,  580. 
where  sales  small,  253. 
ACQUIESCENCE 

by  owner  of  trade-mark  in  infringement,  when  gratuitous,  is  mere  rev- 
ocable license,  100,  137. 

when  it  will  authorize  breach  of  injunction,  115. 

can  only  be  established  where  knowledge  is  proved,  638,  642. 

held  not  to  be  established,  228. 

by  persons  at  a  disadvantage  is  no  defence,  455. 

See  DELAY. 
ACQUISITION 

of  trade-mark  by  long  user,  51,  459. 

without  long  user,  215,  234,  325,  364,  456,  627,  629. 

limited  to  a  particular  class  of  goods,  215,  223,  234,  257,  616. 

421 


INDEX. 

ACQUISITION  —  continued. 

of  trade-mark  from  trustees  for  creditors,  222,  323,  575. 

there  must  have  been  vendible  goods  in  the  market  bearing  the 

mark  for,  140,  215,  223,  234,  264,  301,  339. 
containing  a  false  assertion  is  impossible,  223. 
previously  used  by  others,  276,  301. 
on  formation  of  a  partnership,  222,  399,  408,  437,  502. 
from  a  person  who  had  already  sold  his  right,  not  possible,  367, 

502. 
in  gross  not  allowable,  447,  487,  492,  630. 

except  by  previous  maker  of  the  goods,  492. 
ACTION 

on  the  case,  4,  40,  50,  59,  68,  72,  82,  103,  111,  125,  140,  338,  374. 
fraud  must  be  proved  in,  2,  4,  72,  82,  140,  213,  338. 
plaintiff  in,  must  show  that  his  mark  was  on  vendible  goods  in 

the  market,  140. 

under  5  &  6  Will.  IV.  c.  83,  s.  7,  167. 
for  damages  occasioned  by  an  order  for  spuriously  marked   goods, 

194. 

for  discovery,  519. 
manner  of  trial  of,  644. 
ADDRESS, 

injunction  granted  to  restrain  imitation  of,  443. 
ADJECTIVES 

indicative  of  quality  cannot  be  appropriated,  85,  226. 

See  DESCRIPTIVE  WORDS. 
ADMINISTRATION 

must  be  taken  out  to  a  deceased  proprietor  of  a  trade-mark  before  his 

next  of  kin  can  claim  the  mark,  4,  337. 
ADVERTISEMENT, 

deceptive,  18,  163,  248. 

complicated  label  held  not  to  be  a  trade-mark,  but  a  mere,  223. 
expense  incurred  in,  gives  no  right  of  trade-mark,  264,  339. 
a  necessary  preliminary  to  registration  in  England,  515. 
"  AEILYTON  "  WRITING  FLUIDS,  510. 
AGENT, 

principal  responsible  for  fraud  of,  321. 
acquires  no  personal  right,  534,  554. 

AGENT  FOR  "  Mason  &  Brand's  Essence  of  Beef,"  534. 
AGRICULTURAL 

implements,  marks  on,  412. 
preparations,  marks  on,  250,  364,  489,  554. 
"  AINS WORTH'S  THREAD,"  257. 
"  AKRON  "  CEMENT,  282. 

422 


INDEX. 

ALE, 

marks  on.     See  BEER. 
ALIENS, 

infringement  of  trade-marks  of,  in  England,  151,  152,  164,  171,  199, 
200,  275. 

America,  78,  79,  83,  84,  125,  251. 
"ALLOA"  WOOLLEN  YARNS,  601. 
"  ALLSOPFS  ALES,"  183. 
ALMANACK, 

wrapper  of,  85. 

See  PUBLICATION. 
ALTERNATIVE 

trade-marks  recognized  in  the  United  States,  394. 

registered  in  the  United  States,  501,  544. 
"  AMERICAN  GROCER,  THE,"  503. 

"  Sardines,"  422. 

"  AMOSKEAG"  COTTON  CLOTHS,  314,  500. 
"  ANATOLIA  "  LIQUORICE,  234. 
" ANCHOR  BRAND " 

bacon  and  hams,  645. 

wire,  213. 

"  ANCHOR  TUBE  COMPANY,  THE,"  566. 
"ANCHOVIES,   BURGESS'  ESSENCE  OF,"  117,  169,  170. 
"  ANGLO-PORTUGO  OYSTERS,"  625. 
"  ANGOSTURA  BITTERS,"  591. 
ANNATTO, 

marks  on,  421,  602. 

«  ANNUAL,  BEETON'S  CHRISTMAS,"  450. 
"  ANTIQUARIAN  BOOK-STORE,  THE,"  336. 
"  APOLLINARIS  WATER,"  457,  465,  509,  675. 
APPEAL 

from  an  injunction  restraining  the  use  of  a  trade-mark,  advanced,  346. 

delay  disentitling  appellant  on,  117. 
"  ARAMINGO  CHECK  "  GOODS,  186. 
ARMS  AS  TRADE-MARK.     See  CREST. 

"ARMY  AND  NAVY  COOPERATIVE  SOCIETY,  THE,"  640. 
"AROMATIC  BITTERS,"  432,  591. 
ARTICLES 

of  partnership,  construction  of.     See  PARTNERSHIP. 
"  ASHFORD  LODGE,"  631. 
ASSETS, 

good-will  of  attorney's  practice  is  not,  46. 

medical  practice  held  to  be  to  some  extent,  102. 
not  to  be,  588. 

423 


INDEX. 

ASSETS  —  continued. 

good-will  of  newspaper  is,  3,  35. 

partnership  is,  16,  64,  70,  139,  176,  177,  185,  192,  202,  206,  210, 

215,  248. 
public  house  is,  6. 
shop  is,  3,  58. 

of  partnership,  good- will  of  newspaper  is,  1 73,  1 78. 
trade-mark  is,  80,  215,  337. 
trade  name  is,  248. 
ASSIGNMENT 

of  trade-mark,  possibility  of,  depends  on  the  circumstances,  222,  223, 
521. 

together  with  the  good-will,  257,  279,  319,  331,  521,  580,  630. 
on   sale  of  good-will,  without  direct  reference  to  it,  350,   354, 

492. 

places  assignee  in  position  of  assignor,  138,  257,  279. 
held  that  notice  of  must  be  incorporated  with  the  mark,  263. 

need  not  be  incorporated  with  the  mark,  279. 
twice  over  by  the  same  person  not  allowable,  367,  502. 
does  not  give  a  right  to  use  it  on  another  class  of  goods,  502, 
by  assignee  in  bankruptcy,  222,  323,  575. 
with  limitations  as  to  locality  of  user,  628. 
of  Cutlers'  mark  possible,  where  owned  by  a  non-freeman,  222. 
name  of  hotel,  467. 

theatre,  524, 

good- will  is  subject  to  duty  within  the  Stamp  Acts,  128. 
ATTACHMENT 

issued  for  contempt,  353. 
ATTORNEY, 

contract  by,  to  retire  from  business  and  recommend  clients,  etc.,  en- 
forced, 11. 

specific  performance  of  agreement  by,  for  sale  of  practice,  refused,  22. 
good-will  of  practice  of,  not  assets  to  be  administered,  46. 

See  GOOD- WILL;  PARTNERSHIP. 
"  ATWOOD'S  VEGETABLE  PHYSICAL  JAUNDICE  BITTERS," 

628. 
AUTHOR, 

improper  use  of  nom  de  plume  of,  restrained,  429. 

See  NAME. 
"  AYER'S  CHERRY  PECTORAL,"  574. 

BAGS, 

marks  on,  365. 

424 


INDEX. 

BAILEES 

of  goods  spuriously  marked,  229,  239. 
BAKING  POWDERS, 

marks  on,  161,  182,  656,  671. 

"  BALM  OF  THOUSAND  FLOWERS,"  144,  145. 
BANK  NOTES, 

spurious  issue  of,  restrained,  197. 
"  BANK  OF  ENGLAND  "  SEALING-WAX,  593. 
"BANK  OF  LONDON,  THE,"  140. 
BANKRUPTCY, 

good-will  of  newspaper  passes  as  "  goods  and  chattels  "  on,  12, 159. 

trade-mark  passes  as  "goods  and  chattels"  on,  537. 

transmission  of  good-will  on,  69. 
trade-marks  on,  222,  323,  447. 

sale  of  good- will  on,  17,  69,  323. 

by  assignees  in  bankruptcy  held  not  to  deprive  bankrupt  of  the 

right  to  use  his  own  name,  575. 
"  BANKS  &  CO."  248. 
BARREL, 

special  form  of,  no  trade-mark,  373. 

an  important  element  in  the  trade-mark,  395. 

hoops  on,  no  trade-mark  registrable  in  the  U.  S.  480. 
"  BASS'  BEER,"  310,  655. 
BAZAAR  DEALER  AT  CALCUTTA, 

infringement  of  trade-mark  by,  241. 
"B.  B.  H."  IRON,  215,  530,  540,  555. 
"BEAVERINE"  BOOTS,  375. 
"BEDFORDSHIRE  EXPRESS,  THE,"  317. 
BEER, 

marks  on,  89,  183,  188,  261,  310,  431,  545,  617,  655. 
"BEESWAX  OIL,"  357,  377. 
"  BEETON'S  CHRISTMAS  ANNUAL,"  450. 
"BELGRAVIA,"  264,  265. 
"BELL'S  LIFE  IN  LONDON,"  174. 
"BENSON'S  CAPCINE  PLAISTERS,"  562. 
"BENTLEY'S  MISCELLANY,"  259. 
"  BETHESDA  MINERAL  WATER,"  529. 
«  BHE  HATHI  "  YARN,  646. 
"BIRMINGHAM  PATENT  IRON  AND  BRASS  TUBE  CO.  THE," 

56. 

"  BIRTHDAY  SCRIPTURE  TEXT-BOOK,  THE,"  403. 
"  BISMARCK  "  COLLARS,  300. 
BITTERS, 

marks  on.     See  SPIRITS. 

425 


INDEX. 

BLACKING, 

marks  on,  21,  47,  76,  77,  120. 
BLACK  LEAD, 

marks  on,  343. 

"  BLANCHARD  CHURN,  THE,"  358. 
BOOK, 

name  of.     See  PUBLICATION. 
"  BOOTH'S  THEATRE,"  524. 
BOOTS, 

marks  on,  375. 

"  BORWICK'S  BAKING  POWDERS,"  161,  182. 
BOTTLES, 

imitation  of,  48,  291,  421,  628,  653. 

trade-marks  moulded  in,  157,  551,  608,  628,  652,  653. 

plaintiff  not  disentitled  by  misrepresentation  as  to  size  of,  483. 
"BOVILENE"  POMADE,  319. 
"  BRAND'S  ESSENCE  OF  BEEF,"  534,  570. 
BRANDY, 

marks  on.     See  SPIRITS. 
BREACH  OF  CONTRACT 

on  sale  of  good-will  restrained,  114,  303,  335,350,  485,  548,  552,  604. 
measure  of  damages  for,  485. 

damages  not  given  for,  where  fraud  on  the  public,  146. 

as  to  use  of  initial,  restrained,  419. 

by  licensor,  damages  given  to  exclusive  licensee  for,  489. 

by  registration  of  trade-mark,  restrained,  530. 
BREACH  OF  COVENANT, 

not  to  use  motto,  held  not  to  be  committed,  546. 
BREACH  OF  INJUNCTION, 

motion  to  commit  for,  77,  115,  200,  245,  463,  570,  595,  633. 

attachment  issued  for,  358. 
BREACH  OF  TRUST, 

in  respect  of  trade  secret,  restrained,  31,  110,  290. 

publication  of  catalogue  of  etchings  obtained  by,  restrained,  98. 
"  BRISTOL  MERCURY,  THE,"  12. 
"  BRITANNIA,  THE,"  141. 
"BROOK'S  THREAD,"  622. 

"glace  thread,"  190. 

"BROOKLYN  WHITE  LEAD  COMPANY,"  154. 
"  BROOKMAN  &  LANGDON'S  "  LEAD  PENCILS,  55. 
BROOMS, 

marks  on,  342. 
"  BROSELEY  PIPES,"  243. 

426 


INDEX. 

BRUSHES, 

marks  on,  81. 
BUNDLES  OF  SILK, 

mode  of  making  up,  217. 

"BURGESS'  ESSENCE  OF  ANCHOVIES,"  117,  169,  170. 
BYRON, 

unauthorized  use  of  name  of  Lord,  23. 

«  CACHEMIRE  MILANO  "  SILKS,  571. 
CALCUTTA, 

infringement  of  trade-marks  by  bazaar  dealer  at,  241. 
"CALHOUN"  PLOUGHS,  596. 
CALIFORNIAN  STATUTE  OF  1863,  249. 
"CALISAYA  BARK,   FERRO-PHOSPHORATED  ELIXIR  OF,' 

289. 

"  CANADA  PLATES,"  648. 

"  CAPITAL  AND  COUNTIES  BANK,  THE,"  618. 
CARDS, 

injunction  refused  in  case  of  stamp  on,  2. 
CARPET-STICKS  AS  TRADE-MARKS,  428. 
"  CARRIAGE  BAZAAR,"  294. 
CASE, 

action  on  the.     See  ACTION. 
CATALOGUE  OF  PAINTINGS,  8. 

etchings  improperly  obtained,  publication  of,  restrained,  98. 
CATTLE  FOOD, 

marks  on,  560,  645. 

"  CAVE'S  DRESS-BASKETS,"  304. 
CEMENT, 

marks  on,  282. 

"  CENTENNIAL  "  CLOTHING,  417. 
alcoholic  spirits,  470. 
wines,  506. 

«  CHARBONNEL  AND  WALKER,"  639. 
«  CHARITY,"  440. 
"CHARTER  OAK"  STOVES,  313. 
CHEAT,  155. 

"  CHEAVIN'S  FILTERS,"  528. 
"  CHERRY  PECTORAL,' '  574. 
"CHERRY  ST.  MILLS"  Flour,  405. 
"  CHINESE  LINIMENT,"  99, 109. 
"CHLORODYNE,"  230,  424. 
"CHRISTY'S  MINSTRELS,"  137,  242. 
«  CHUBB' S  SAFES,"  255. 

42T 


INDEX. 

CHURNS, 

marks  on,  358. 
CIGARS, 

marks  on.     See  TOBACCO. 
CIRCUIT  COURTS, 

jurisdiction  of  the  U.  S.  in  cases  of  registered  trade-marks,  613,  629. 
CIRCULARS, 

issue  of  deceptive,  92,  163,  193,  207,  272,  305,  438. 
"  CLARIBEL'S  "  SONGS,  293. 
"CLARK'S  THREAD,"  148. 
«  CLARKE'S  CONSUMPTIVE  PILLS,"  93. 
CLASS  OF  GOODS, 

trade-marks  can  only  be  acquired  for  a  particular,  215,  223,  234,  257, 
555,  559,  616. 

infringement  must  be  by  use  on  the  same,  314,  559. 

assignment  of  a  mark  gives  no  right  to  use  it  on  another,  502. 

marks  common  in  one,  not  necessarily  common  in  other  classes,  342, 
579. 

registration  of  old  marks  for  part  of  a,  granted,  555,  616,  623,  643. 
new  marks  for  part  of  a,  refused,  645. 

for  a,  for  part  of  which  alone  an  old  mark  was  registered, 

refused,  655. 

"CLICQUOT"  CHAMPAGNE,  239. 
CLOTH, 

marks  on,  1,  321,  400. 
CLOTHING, 

marks  on,  417,  636. 
"CLUB  HOUSE"  GIN,  187. 
COAL, 

marks  on,  327,  599,  633. 
COAL  HEWERS, 

false  tokens  used  by,  287. 
"  COATS'  THREAD,"  79. 
"  COCOAINE,"  277. 
COCOATINA, 

marks  on,  298. 

"  COE'S  SUPERPHOSPHATE  OF  LIME,"  250,  489. 
COLLAR  BOXES 

are  not  trade-marks,  538. 
COLLARS, 

marks  on,  300. 

"  COLLINS  &  CO.  Hartford  Cast  Steel,  Warranted,"  151,  152,  164, 
171. 

428 


INDEX. 

"COLOGNE,  EAU  DE,"  113,  118,  130,  275,  592,  642,654. 

"  COLONIAL  LIFE  ASSURANCE  COMPANY,  THE,"  236. 

COLORABLE 

authority  to  use  name,  76,  123,  243,  298,  390,  391,  409,  533,  534. 
imitation,  76,  96,  103,  106,  119,  120,  123,  124,134,  138,  150,  154,  170, 
174,  175,  199,  200,  204,  213,  225,  228,  240,  244,  258,  271,  273,  275, 
277,  291,  298,  310,  316,  317,  319,  329,  330,  331,  338,  345,  365,  366, 
370,  374,  379,  395,  411,  415,  421,  435,  442,  445,  461,  463,  465,  466, 
514,  545,  579,  580,  591,  603,  616,  617,  621,  636,  642,  646,  650,  651, 
653. 

See  PARTIAL  IMITATION. 
no  general  rule  to  be  laid  down  as  to,  223. 
statement  as  to  relationship,  460. 
"  COLTON  DENTAL  ROOMS," 

late  operator  at  the,"  305. 

COMBINATION  MARKS  ON  COTTON  GOODS,  581,  585. 
COMMISSIONERS  OF  PATENTS  IN  ENGLAND, 
position  of  the,  515,  540,  647. 
in  America,  position  of  the,  525. 
COMMIT, 

motion  to,  77,  115,  200,  245,  463,  570,  595,  633,  635. 

See  ATTACHMENT. 
COMMITTEE  OF  EXPERTS  AT  MANCHESTER, 

position  of  the,  586,  622,  632. 
COMMON 

marks  cannot  be  protected  as  trade-marks,  85,  218,  223,  226,  227, 
236,  251,  263,  269,  274,  279,  282,  286,  289,  296,  306,  339,  363,  364, 
407,  410,  431,  440,  448,  513,  520,  541,  581,  593,  596. 

See  DESCRIPTIVE  WORDS;  QUALITY. 
marks  do  not  become,  unless  similar  marks  have  been  in  actual  use, 

646. 

under  the  Registration  Acts  marks  used  by  more  than  three  firms  be- 
come, 558,  589,  593,  610,  611,  620. 
COMPANIES  ACT,  1862,  THE,  618,  619. 
COMPANY, 

name  of,  88,  92,  154,  221,  236,  318,  325,  340,475,476,  500,  507,  548, 
566,  604,  618,  619,  640. 

use  of,  restrained  within  certain  limits,  325. 
COMPROMISE  OF  PROCEEDINGS,  194,  209. 
"  CONDY'S  FLUID"  AND  "OZONIZED  WATER,"  561. 
"  CONGRESS  SPRING  WATER,"  354. 
CONSTRUCTION, 

principle  of.     See  PRINCIPLE  OF  CONSTRUCTION. 
«  CONTEMPORARY  REVIEW,  THE,"  539. 

•  429 


INDEX. 

CONTEMPT, 

attachment  issued  for,  353. 

See  COMMIT,  MOTION  TO. 
CONTINUANCE 

of  action  against  administratrix  refused,  482. 
CONTRACT 

for  sale  of  attorney's  practice  enforced,  11. 

goods  to  be  supplied  under  a  certain  name  or  mark,  questions  as 

to,  216,. 648. 

implied  on  sale  of  surgeon's  practice,  220. 
CONVEYANCES, 

use  of  name  of  hotel  on,  104,  111,  266. 
«  COPAIBA, 

Franks'  Specific  Solution  of,"  87. 
COPYRIGHT, 

trade-marks  distinguished  from,  84,  97,  130,  152,  246,  265,  292,  325. 

connected  with,  105. 
in  title  of  publication  asserted,  638. 

only  protected  with  the  rest  of  the  publication,  410. 
"  CORRESPONDENT,  THE,"  246. 
COSMETICS, 

marks  on.    See  TOILET,  PREPARATIONS  FOR  THE. 
COSTS 

of  litigation  occasioned  by  infringement  must  be  paid  by  infringer,  79, 
81,  82,  169,  170,  171,  211,  213,  234,  255,  280,  387,  512. 

though  an  infant,  255. 
infringer  can  only  escape  paying,  by  offer  of  complete  submission,  79, 

136,  169,  170,  171,  234,  235,  321,  369,  583. 
of  unnecessary  litigation,  successful  plaintiff  deprived  of,  63,  170,  253, 

261,  369,  663. 
occasioned  by  unfounded  allegations  thrown  on  successful  plaintiff,  81, 

258,  587,  608. 
not  given  when  both  parties  are  in  pari  delicto,  144. 

to  successful  but  disingenuous  defendant,  223,  230,  237,  257,  264, 

265,  324,  442,  449,  478,  488,  498. 

to  plaintiff  who  demanded  more  than  his  right,  285,  488,  512. 
delayed  to  take  proceedings,  251,  500. 
acted  too  hastily,  254,  583. 

thrown  upon  plaintiff  who  had  refused   to  accept  a  sufficient  offer, 
810. 
disentitled  by  misuse  of  the  word  "  patent  "  and  aware  of  the 

objection,  267. 
in  doubtful  case,  463. 

430 


INDEX. 

COSTS  —  continued. 

of  motion  to  commit  thrown  on  defendant,  though  motion  refused, 
200. 

appearance  on  appeal  thrown  on  party  unnecessarily  appearing, 
369. 

innocent  agents  relieved  from  payment  of,  369. 

given  to  innocent  holders  of  goods  spuriously  marked,  369. 

of  questions  as  to  registration,  593,  616,  621,  626,  637. 

lien  for,  369,  567. 
COTTON  GOODS, 

marks  on,  100,  134,  184,  186,  198,  199,  200,  204,  241,  307,  314,  338, 

356,  411,  454,  500,  546,  581,  585,  586,  622,  646. 
"  COUGH  REMEDY,"  541. 
COUNTER-CLAIM, 

injunction  granted  on,  443. 
"  COURTRIA  FLAX  THREAD,"  195. 
COVENANT 

compelling  retiring  partner  to  quit  trade  altogether,  5. 

vendor  of  solicitor's  practice  to  quit  practice  in  Great  Britain,  66. 

to  make  good-will  of  business  sold  as  profitable  as  possible,  20. 

not  to  publish  a  periodical  like  one  sold,  259. 

not  to  trade  within  certain  limits  usual  on  sale  of  good-will,  168. 

by  vendor  of  good-will  and  trade  name  enforced,  485,  604. 
"CRACK-PROOF"  INDIA-RUBBER  GOODS,  547. 
CREST  AND  ARMS 

as  trade-marks,  251,  258,  338,  546,  592,  621,  622,  642,  654. 
CRIMINAL  OFFENCE.     See  CHEAT;  FALSE  PRETENCES;  FOBGERY; 
MISSOURI. 

discovery  of  matters  tending  to  convict  of,  not  enforced,  188. 
"  CROCKETT'S  LEATHER  CLOTH,"  223. 
"CRONICA,  LA,"  295. 
"  CROSS  "  COTTON,  199,  200,  204. 
"  CROUP  MEDICINE,"  516. 
«  CROWLEY  MILLINGTON  "  STEEL,  63. 
"  CROWN  AND  ANCHOR  "  WIRE,  213. 

Seixo  wine,   256. 

paints,  402. 

clothing,  636. 
CRUCIBLES, 

marks  on,  267. 

"CUNDURANGO  OINTMENT,  C.  O."  376. 
CUSTOM, 

foreign,  to  infringe  is  no  defence,  83. 

of  trade  to  place  makers'  marks  on  goods  made  for  them,  164. 

431 


INDEX. 

CUTLERS'  COMPANY'S 
marks,  222,  621,  643. 

assignable  where  owned  by  a  non-freeman,  222. 
title  to,  must  be  perfected  before  registration,  643. 
CUTLERY, 

marks  on,  82,  115,  222,352,359,360,361,362,442,616,621,641,643. 

See  EDGE  TOOLS. 
"  CUTTER" 
barrel,  373. 
whiskey,  427. 
"CYLINDER"  GLASS,  121. 

"  D,"  THE  LETTER, 

in  a  lozenge,  as  a  trade-mark,  371. 
DAMAGE, 

specific,  need  not  be  proved  to  constitute  infringement  of  trade-mark, 
50,  68,  82,  99,  196,  218,  280,  313,  379. 

entitle  to  substantial  damages  for  imitation  of  carriages  on 

hire,  111. 

for  an  interdict  to  be  obtained  in  Scotland,  413. 
where  there  is  proof  of,  substantial  damages  will  be  given,  83. 
the  burden  lies  on  the  plaintiff  to  prove,  252. 
DAMAGES, 

nominal,  given  for  infringement  of  right,  50,  59,  68,  82,  99. 
exemplary,  not  to  be  given  for  infringement  of  trade-mark,  83. 
substantial,  given  without  proof  of  specific  damage,  111. 
inquiry  as  to,  given,  though  persons  other  than  the  plaintiff  interested 

in  the  mark,  243. 
for  breach  of  contract  not  given,  there  being  a  fraud  on  the  public, 

146. 

occasioned  by  order  for  spuriously  marked  goods,  action  for,  194. 
whole  profits  produced  by  sale  awarded  as,  347. 
important  elements  in  determining  the  amount  of,  354. 
not  given  where  the  defendants  had  acted  bonajide,  387. 

plaintiffs  had  delayed,  500. 
profits  which  would  have  been  made  if  an  equal  quantity  of  genuine 

goods  had  been  sold,  given  as,  366,  481. 

for  breach  of  contract  given  to  exclusive  licensee  against  licensor,  489. 
"DAVE  JONES,"  WHISKEY,  437. 
"  DAVIS'  PAIN  KILLER,"  103,  281. 
"  DAY  AND  MARTIN'S  BLACKING,"  21,  47,  76,  77. 
DECEPTION, 

there  must  be  probability  of,  to  constitute  infringement  of  trade-mark, 
53,   65,  72,   73,   84,  85,  91,   109,  123,  138,  157,   186,  215,  217,  223, 
432 


INDEX. 

DECEPTION  —  continued. 

230,  245,  256,  274,  293,  295,  332,  425,  426,  433,459,  466,  478,  488, 
529,  541,  550. 
there  must  be  probability  of,  to  constitute  infringement  of  name  of 

company,  88,  221,  236,  618,  619,  640. 
burden  of  proof  as  to  probability  of,  646. 
"DECKER  PIANO,"  525. 
DECREE,  FORM  OF,  in  U.  S.  Court,  667. 
DEFENCE, 

knowledge  of  immediate  purchaser  is  no,  40,  79,  83,  84,  136,  213,  247, 

253. 

that  a  person  infringing  an  author's  rights  is  the  owner  of  the  copy- 
right is  no,  49. 
the  fact  that  no  specific  damage  is  proved  is  no,  50,  68,  82,  99,  196, 

213,  280,313,  379. 

equality  of  quality  is  no,  50,  83,  84,  109,  213. 
descriptiveness  of  plaintiff's  mark  is,   4,  59,  100,  144,  179,  187,  205, 

232,  269.     See  DESCRIPTIVE  WORDS. 

plaintiff's  own  misrepresentations  constituting,  60,  73,  90,  91,  133, 
144,  191,  223,  232,  267,  308,  418,  434,  562,  575,  628. 

not  constituting,  10,  106,  132,  136,  180,  195,  276,  323,  325, 

348,  483,  587,  591. 

delay  constituting,   116,   117,   118,  246,  314,  337,  352,  381,  442, 
449,   628. 

not  constituting,  83,  110,  115,  132,  228,  244,  304,  313,   325, 

344,  455,  580,  602,  638,  642. 
on  motion  to  commit,  115. 

misuse  of  word  "patent"  constituting,  116,  223,  267,  288,  324, 
343,  444,  528. 

not  constituting,  40,  119,  142,  214,  267,  304,  316,  384. 
having  ceased  to  use  the  mark  infringed  is  no,  125. 
not  being  registered  at  the  Stamp  Office  as  proprietor  of  news- 
paper is  no,  141. 
mark  not  having  been  on  goods  in  the  market  is  a,  140,  215,  223, 

234,  264,  301,  339. 

alienage  is  no,   78,  79,  83,  84,  151,  152,  164,  171. 
having  acquiesced  gratuitously  in  the  infringement  is  no,  100. 
having  adopted  an  additional  mark  is  no,  226,  384. 
having  adopted  the  mark  only  recently  is  no,  215,  234. 
not  being  solely  interested  in  the  maik  is  no,  80,  196,  243. 
own  improper  conduct  in  misleading  the  defendant  is,  265. 
merely  collateral  misrepresentations  are  no,  291,  384. 
own  goods  being  injurious  is  no,  for  a  defendant  in  pari  deliclo, 
291. 

28  433 


INDEX. 

DEFENCE  —  continued. 

plaintiff's  not  having  registered  his  mark  in  the  United  States  is  no, 
352. 

having  partly  purchased  and  partly  invented  is  no,  367. 
abandonment  of  his  mark  held  not  to  be  established,  367. 
mark  consisting  of  known  words  is  no,  if  the  combination  is  new, 

390. 

copyright  being  insufficient,  held  to  fail,  390. 
not  being  himself  the  manufacturer  of  the  article  is  no,  461. 
having  used  the  mark  beyond  the  limits  fixed  on  the  assignment 

to  him  is,  628. 

publication  having  been  long  out  of  print  is  no,  638. 
goods  having  become  known  in  the  market  by  a  variety  of  names 

is  no,  646. 

defendant's  name  being  placed  in  the  spurious  mark  is  no,  198,  226, 
269,  280,  301,  310,  329,  609,  646. 

may  be  an  element  of,  227,  232,  251,  363,  484,  608. 
mark  being  permitted  by  foreign  law  is  no,  275. 

licensed  by  foreign  sovereign  is  no,  352. 
having  ceased  to  use  the  spurious  mark  is  no,  484,  603,  617. 
not  being  personally  cognizant  of  the  fraud  is  no,  321,  583. 
absence  of  fraudulent  intention  is  no,  63,  99,  109,  157,  171,  174,  194, 
204,  213,  247,  253,  313,  315,  329,  340,  387,  433,  466,  477,  500,  579, 
580,  608,  646,  650. 

foreign  custom  to  infringe  is  no,  83,  275. 

colorable  differences  are  no,  76,  103,  138,  213,  228,  250,  256,  302, 
305,  313,  329,  352,  370,  379,  395,  435,  636,  646,  650,  651,  653.  See 
COLORABLE  IMITATION. 

absence  of  probability  of  deception  is,  53,  65,  72,  73,  84,  85,  91,  109, 
123,  138,  157,  186,  215,  217,  221,  230,  236,  245,  256,  274,  293,  295, 
332,  425,  426,  433,  459,  466,  478,  488,  529,  541,  550,  618,  619, 
640. 

that  the  name  used  is  the  defendant's  own  name,  and  that  there  is  no 
fraud,  is,  82,  106,  117,  148,  180,  240,  257,  278,  427,  472,  521,  525, 
534,  541,  560,  573,  580. 

that  the  mark  is  used  on  other  classes  of  goods,  is  no,  579. 
DELAY, 

plaintiff  disentitled  by,  116,  117,  118,  246,  314,  337,  352,  381,  442, 
449,  628. 

on  motion  to  commit,  200. 
to  account,  244,  251,  500,  580. 
to  costs,  251,  500. 
to  damages,  500. 

434 


INDEX. 

DELAY  —  continued. 

plaintiff  not  disentitled  by,  83,  110,  115,  132,  228,  244,  304,  313,  325, 
344,  455,  580,  602,  638,  642. 

on  motion  to  commit,  115. 

for  the  purpose  of  obtaining  evidence,  304,  325. 
effect  of,  on  the  account,  384,  580. 
does  not  affect  right  to  injunction,  580,  665. 
DELIVERY-UP 

of  spuriously  marked  goods  for  erasure,  196,  211. 

after  erasure  to  indorsee  of  dock-warrants,  229. 
«  DEMOCRATIC  REPUBLICAN  NEW  ERA,  THE,"  65. 
"DENT'S  WATCHES,"  196. 
"DERRINGER'S  PISTOLS,"  249,  347. 
DESCRIPTIVE 

device,  425,  527. 

words   cannot  be  claimed,  59,  279,  528,  529,  541.     See  COMMON 
MARKS  ;  QUALITY. 

"  Dr.  Johnson's  Yellow  Ointment,"  4. 

"A.  C.  A."  cotton  tickings,  100. 

"Burgess'  Essence  of  Anchovies,"  117. 

"  Galen,"   "  Lake,"  "  Cylinder,"    "  Wayne,"  "  New   York  " 

glass,  121. 

"  Balm  of  Thousand  Flowers,"  144,  145. 
"  Schiedam  Schnapps,"  179,  415,  653. 
"  Club  House  Gin,"  187. 
•'Paraffin  Oil,"  205. 

"  Extract  of  Night-blooming  Cereus,"  232. 
"  Old  London  Dock  Gin,"  240. 
"Liebig's  Extract  of  Meat,"  286. 
"  Ferro-Phosphorated  Elixir  of  Calisaya  Bark,"  289. 
"  Desiccated  Codfish,"  306. 
"  Lackawanna  Coal,"  327. 
"  Antiquarian  Book-store,"  336. 
"Beeswax  Oil,"  357,  377. 
"  Razor-Steel,"  362. 
"  Mammoth  Wardrobe,"  363. 
"Cundurango  Ointment,  C.  O."  376. 
"Invisible  "  face-powder,  378. 
"  Macassar  Oil,"  386. 
"  Lieut.  James'  Horse-blister,"  388. 
"  Golden  Ointment,"  389. 
"  Parson's  Purgative  Pills,  P.P.  P."  404. 
"Johnson's  American  Anodyne  Liniment,  Established  A.  D. 
1810,"  404. 

435 


INDEX.. 

DESCRIPTIVE  —  continued. 

"  New  Manny  Harvester,  The,"  412. 

"  Richardson's    Patent    Union    Leather-splitting    Machine," 
115. 

"  American  Sardines,"  422. 

"  Chlorodyne,"  424. 

"  Loch  Katrine  "  whiskey,  452. 

"  Julienne  "  soup,  461. 

"  Tasteless  "  drugs,  493. 

"  Fiir  Familien  Gebrauch,"  504. 

"  Lawrence  Feiner  Familien  Flannel,"  504. 

"  Croup  Medicine,"  516. 

"  Station  Hotel,"  520. 

"  Cough  Remedy,"  541. 

"  Crack-proof  "india-rubber,  547. 

"  Cachemire  MHano,"  571. 

"  Cherry  Pectoral,"  574. 

"Highly  Concentrated  Compound  Fluid  Extract  of  Buchu," 
575. 

"  Egg  Macaroni,"  577. 

"  Angostura  Bitters,"  591. 

"  Valvoline  "  oil,  597. 

"  Iron-stone  "  water  pipes,  612. 

"  Anglo-Portugo  Oysters,"  625. 

"  Porous  "  plasters,  626. 

"  Ne  Plus  Ultra  "  needles,  262. 

"  Nourishing  Stout,"  431. 

"  East  Indian  Medicines,"  670. 

"  Post  Office"  directory,  661. 

"  Charity  "  as  name  of  a  play,  440. 

"Iron  Stone,"  612. 

"  Singer  Machine,"  659. 
"  DESICCATED  CODFISH,"  306. 
DESIGN  PATENT, 

will  not  be  granted  in  the  United  States  to  a  trade-mark,  341. 
distinguished  from  trade-mark,  582. 
"  DEVLIN  &  CO."  463. 
DIRECTIONS  FOR  USE, 

imitation  of,  31,  50,  99,  163,  296,  432,  560. 
DISCONTINUANCE  OF  USE, 

by  plaintiff  of  genuine  mark,  is  no  defence,  125. 

defendant  of  spurious  mark,  is  no  defence,  484. 
DISCOVERY, 

enforced  in  full,  203,  224,  519. 

436 


INDEX. 

DISCOVERY—  continued. 

enforced  in  full,  with  limitations,  356. 

of  matters  tending  to  convict  of  a  criminal  offence  not  enforced,  188. 
DISENTITLED, 

plaintiff,  by  his  own  misrepresentations,  60,  73,  90,  91,  106,  133,  144, 
191,  223,  267,  291,  308,  418,  434,  562,  575,  628. 

however  obvious  they  may  be,  223. 
misuse  of  the  word  "  patent,"  116,  223,  267,288,  324,  343, 

444,  528. 

improper  conduct  in  misleading  the  defendants,  265. 
delay,  116,  117,  118,  246,  314,  337,  352,  881,  442,  449,  628. 
retaining  guarantee  of  his  assignor's  personal  inspection,  575. 
using  trade-marks  beyond  the  limits  fixed  on  assignment,  628. 
not,  by  incorrect  statements  as  to  authorship  of  his  magazine,  10. 
authorship  of  his  musical  composition,  132,  136. 
make  of  his  thread,  142,  195. 
size  of  his  bottles,  483. 
his  "pianoforte  tutor,"  587. 
as  against  a  defendant  in  pari  delicto,  180. 
assumption  of  title  of  professor,  106. 
use  of  word  "patent,"  40,  119,  142,  214,  267,  304,  316,  384. 

name  of  vendor  of  the  business,  323. 
delay,  83,  110,  115,  132,  228,  244,  304,  313,  325,   344,  455,  580, 

602,  638,  642. 

alienage,  78,  79,  83,  84,  151,  152,  164,  171. 
discontinuing  the  use  of  the  mark  infringed,  125. 
non-registration  at  the  Stamp  Office  as  proprietor  of  a  newspaper, 

141. 

book  having  been  long  out  of  print,  638. 
his  goods  having  become  known  by  a  variety  of  names,  646. 
DISMISSAL 

of  suit  for  injunction,  abandonment  of  trade-mark  by,  230. 
DISSOLUTION, 

of  partnership,  right  of  partners  on,  37,  122,  149,  156,  172,  173,  176, 
177,  180,  202,  206,^207,  210,  215,  238,  248,  260,  368,  383,  393,  406, 
408,  437,  455,  548,  561,  566,  585,  639. 

notices  of,  not  to  be  published  until  expiration  of  term,  75. 
specific  performance  granted  of  agreement  between  solicitors  on, 

135. 

"DIXON'S  STOVE-POLISH,"  331. 
"DOCTOR 

Johnson's  Yellow,  or  Golden  Ointment  for  the  Eyes,"  4,  38,  389. 
"Morse's  Indian  Root  Pills,"  180. 

437 


INDEX. 

"  DOCTOR  "  —  continued. 

11 3.  M.  Lindsey's  Improved  Blood-Searcher,"  279. 

"  Simmons'  Liver  Medicine,"  348. 

"Lobenthal's  Essentia  Antiphthisica,"  497. 

"  J.  Blackman's  Genuine  Healing  Balsam,"  502. 

"  C.  M'Lane's  Liver  Pills,"  580. 
DOG-BISCUITS, 

marks  on,  488,  644,  645. 
"  DOWNER,  BEMIS  &  CO."  231. 
"DUBLIN"  SOAP,  565. 

"  DURABLE  "  PRINTERS'  ROLLERS,  630. 
"  DURHAM  SMOKING  TOBACCO,"  392,  399,  466,  590. 

"  EAGLE  BRAND  "  IRON,  258. 

"  Pencil  Company,  The,"  522. 

"EAU-DE-COLOGNE,"  113,  118,  130,  275,  592,  642,  654. 
"ECONOMIC  CONVEYANCE  COMPANY,  THE,"  86. 
EDGE-TOOLS, 

marks  on,  151,  152,  164,  171. 

See  CUTLERY. 
"EDINBURGH  CORRESPONDENT,  THE,"  34. 

•    "  Philosophical  Journal,  The,"  89. 
EDITOR  OF  NEWSPAPER, 

rights  of,  39,  181,  450. 
"EGG  MACARONI,"  577. 
"  EICHELE  &  CO.'S"  MATCHES,  485. 
ELEMENTS, 

necessary  to  found  jurisdiction  of  court,  228,  234. 
"ELEPHANT  CHOP"  CLOTHS,  198. 

yarn,  646. 

"  ELKINGTON'S  A"  SPOONS,  147. 
EMBROIDERY  COTTON, 

marks  on,  199,  200,  204. 

"  EMERSON'S  ELASTIC  RAZOR  STROP,"  309. 
EMPLOYMENT, 

rights  of  servant  on  leaving.     See  FORMER  EMPLOYMENT. 
"ENGLAND'S  QUEEN"  SEWING-MACHINES,  459. 
"ENGLISH'S  X  BROOMS,"  342. 
ENGRAVERS, 

infringement  of  trade-marks  by,  89,  113. 
ENLARGEMENT 

of  injunction  to  cover  further  fraud,  200. 
"ENO'S  FRUIT  SALT,"  609. 

"EQUAL  TO  DAY  &  MARTIN'S  "  BLACKING,  47. 

438 


INDEX. 

EQUALITY  IN  QUALITY  IS  NO  DEFENCE,  50,  83,  84,  109,  213. 

"  ERA,  THE,"  550. 

ERASURE  OF  SPURIOUS  MARKS,  196,  211,  369. 

"ESSENCE 

of  anchovies,  Burgess',"  117,  169,  170. 

"  beef,  Brand's,"  534,  570. 
"ESTCOURT'S  HOP  SUPPLEMENT,"  449. 
ETCHINGS, 

publication  of  catalogue  of,  improperly  obtained,  restrained,  98. 
"ETHIOPIAN  STOCKINGS,"  80. 
"EUREKA 

Ammoniated  Bone  Superphosphate  of  Lime,"  364. 
shirts,  384. 

"EVERETT'S  PREMIER"  BLACKING,  120. 
EVIDENCE 

of  defendant's  intention,  72. 

plaintiff  not  disentitled  by  delay  for  the  purpose  of  obtaining,  304,  325. 
«  EX  leres  DE  LA  MAISON  BOISSIER  DE  PARIS,"  498. 
"EXCELSIOR"  COTTON  GOODS,  546. 

white  soft  soap,  226. 

EXCEPTIONS  FOR  SCANDAL,  414. 
EXCLUSION 

of  patentee  from  using  his  own  name  as  his  trade-mark  by  its  prior 

adoption  by  another,  284. 
EXCLUSIVE 

right  in  article  exists  only  by  patent,  3,  4,  19,  59,  68,  84,  99,  103, 130, 
388,  389,  416,  461,  591,  628. 

trade-mark  acquired  by  long  user,  51,  459. 

without  long  user,  215,  234,  325,  364. 
only  for  a  particular  class  of  goods,  215,  223,  234,  257. 
by  purchase  from  trustees  for  creditors,  222,  323,  575. 
which  contains  a  false  assertion  cannot  be  obtained,  223. 

And  see  REPRESENTATIONS. 

has  been  partly  purchased  and  partly  invented,  367. 
words  maintainable,  irrespective  of  fraudulent  imitation,  63. 

And  see  FRAUDULENT  INTENTION. 
not  maintained,  57. 

of  quality  cannot  be  maintained,  59,  85,  100,  121,  187,  226, 
232,  236,  269,  279,  289,  339,  410,  431,  541,  557,  581,  626. 

And  see  DESCRIPTIVE  WORDS. 
right  in  name  applied  to  goods  made  under  patent  not  claimable,  205, 

474,  528,  536,  561,  578. 
prize  medal  not  claimable,  218. 

439 


INDEX. 

i 

EXECUTORS, 

action  by,  338,  347. 
EXEMPLARY 

damages  not  to  be  given  for  infringement  of  trade-mark,  83. 
EXHIBITION 

in  public  held  to  be  evidence  of  defendant's  bona  fides,  251. 
EXPERTS, 

committee  of,  at  Manchester,  586,  622,  632. 
EXPORTER  OF  GOODS, 

question  between  manufacturer  and,  5S5. 
"  EXTRACT  OF  MEAT, 

Liebig's,"  286. 

"FABER'S  PENCILS,"  278. 

FALSE  PRETENCES,  120,  147,  155,  161,  182,  183,  285,  287,  349. 

FAMILY 

name,  no  right  of  property  in,  312. 

residence,  no  right  of  property  in  name  of,  63-1. 
FANCY  NAMES 

valuable  in  proportion  to  their  extravagance,  145,  205. 

"  Howqua's  Mixture  "  tea,  60. 

"  Medicated  Mexican  Balm,"  73. 

"  Persian  Thread,"  78,  83,  84,  124. 

"Ethiopian  Stockings,"  80. 

"  Wistar's  Balsam  of  Wild  Cherry,"  90>. 

"Chinese  Liniment,"  99,  109. 

"  Perry  Davis's  Pain  Killer,"  103,  281. 

"  Everett's  Premier  "  blacking,  120. 

"Kathairon,"  133. 

"Balm  of  Thousand  Flowers,"  144,  145. 

"  Genuine  Yankee  Soap,"  150,  225,  662. 

"  Dr.  Morse's  Indian  Root  Pills,"  180. 

"Meen  Fun  "  skin  powder,  191. 

"  Cross"  cotton,  199,  200,  204. 

"  Anchor  Brand  "  wire,  213. 

"  Excelsior  White  Soft  Soap,"  226. 

"  Chlorodyne,"  230. 

"  Anatolia  "  liquorice,  234. 

"  Ox  "  mustard,  244. 

"  Star  "  iron,  271. 

pencils,  481. 
oil,  486. 

"  Sweet  Opoponax  of  Mexico,"  276. 

"  Cocoaine,"  277. 

440 


INDEX. 

FANCY  NAMES  — continued. 

"  Bismarck  "  collars,  300. 

"Hero"  jars,  301. 

"  Golden  Crown  "  cigars,  308. 

"Charter  Oak  "  stoves,  313. 

"  Bovilene"  pomade,  319. 

"  Grenade  "  syrup,  334. 

"Congress  Spring  "  water,  354. 

"  Eureka"  goods,  364,  384. 

"  Silver  Grove  "  whiskey,  374. 

"  Beaverine  "  boots,  375. 

"Durham  Smoking  Tobacco,"  392,  399,  466,  590. 

"  Keystone  Line  "  of  steamships,  396. 

"  Turin,"  "  Sefton,"  "  Leopold,"  "  Liverpool"  cloth,  400. 

"  Centennial  Clothing,"  417. 
"wines,"  506. 

"  Magnolia,"  "  Dave  Jones  "  whiskey,  437. 

"  Rising  Sun  "  stove  polish,  445. 

"Licensed  Victuallers'  Relish,"  447. 

"  Pectorine,"  458. 

"  Gouraud's  Oriental  Cream,"  460. 

"  Slate  Roofing  Paint,"  471. 

"  German  Sirup,"  473. 

"  Lion  "  goods,  501. 

"  Tamar  Indien  "  lozenges,  532. 

"  Lactopeptine  "  medicine,  543. 

"  Dublin  "  soap,  565. 

"  Wamsutta"  muslin,  660. 

"  Mrs.  Mills'  Cream,"  664. 
"  FARINA'S   EAU    DE    COLOGNE,"  113,   118,  130,  275,  592,  642, 

654. 
"  FERRO-PHOSPHORATED   ELIXIR   OF   CALISAYA   BARK," 

289. 

"FIBRINE  DOG-CAKES,"  644. 
FILTERS, 

marks  on,  528. 
FIREWORKS, 

marks  on,  253. 

FIRM  NAME.    See  TRADE  NAME. 
FLANNEL, 

marks  on,  504. 

"FLAVEL'S  PATENT  KITCHENER,"  116. 
"FLOR  FINA  PRAIRIE  SUPERIOR  TABAC  "  cigars,  433. 

441 


INDEX. 

FLOUR, 

marks  on,  367,  405,  490,  649. 
"FORD'S  EUREKA  SHIRT,"  384. 
FOREIGN 

custom  to  infringe  trade-marks  is  no  defence,  83. 
language,  words  in,  used  as  trade-marks,  51,  334,  411,  581,  647. 
trade-marks,  infringement  of.     See  ALIENS. 
FORGERY,  155,  161. 
FORMER  EMPLOYMENT 

may  be  stated  by  a  former  servant  or  member  of  a  firm  so  as  not  to 
produce  deception,  107,  210,  223,  247,  254,  309,  398,  498,  534. 

but  not  in  such  a  way  as  to  produce  deception,  117,  119,  247, 

305,  398,  566. 

nor  in  breach  of  contract,  552. 
FORWARDING  AGENTS, 

injunction  against,  369. 

"FRANKS'  SPECIFIC  SOLUTION  OF  COPAIBA,"  87. 
FRAUD 

disentitling  to  remedy.     See  DEFENCE  ;  DISENTITLED. 
name  of  place  of  business  may  be  used  without,  521. 
on  the  public.     See  PUBLIC. 
FRAUDULENT 

intention,  there  may  be  infringement  without,  69,  99,  109,  157,  171, 
174,  194,  204,  213,  247,  253,  313,  315,  329,  340,  387,  433,  466,  477, 
500,  579,  580,  608,  646. 

trade-marks  may  not  be  imitated  with,  73,  119,  294,  398,407, 

433,  542,  580,  650. 

must  be  proved  in  a  common  law  action,  2,  4,    72,  82,  140,  213, 
338. 

an  action  under  5  &  6  Will.  IV.  c.  83,  §  7,  167. 
imitation  of  name  over  shop  frontage,  304. 
use  of  another's  testimonials,  restrained,  87. 

man's  own  name,  restrained,   106,  117,  124,  148,   333,  340,  388, 

580. 

"FRESE  &  CO.'S"  TEA,  484,  603. 
"FROM 

Thresher  &  Glenny,"  247. 
"  the  late  R.  Hendrie,"  254. 
"  Hookham  &  Pottage,"  398. 
"  FRUIT  SALT,  ENO'S,"  609. 
"FULLWOOD  &  CO.'S"  ANNATTO,  421,  602. 

"GALEN"  GLASS,  121. 


INDEX. 

GENUINE 

marks,  infringement  by  misuse  of,  126,  253,  441,  549,  556,  650,  651. 
Yankee  soap,  150,  225. 
GEOGRAPHICAL  NAMES 

as  trade-marks,  234,  282,  327,  339,  392,  399,  405,  407,  410,  439,  452, 

529,  542,  565,  590,  599,  601. 
"GERMAN  SIRUP,"  473. 
"  GILLOTT'S  PENS,"  126,  269. 
GIN, 

marks  on.  See  SPIRITS. 
"GLACE"  THREAD,  190. 
GLASS, 

marks  on,  121. 
"  GLENDON  "  IRON,  439. 
"  GLENFIELD  STARCH,"  329. 
"GLOBE"  CUTLERY,  641. 
"  GOLD  MEDAL  "  SALERATUS,  448. 
"  GOLDEN  OINTMENT,"  389. 
"GOLSH'S  FRICTION  MATCHES,"  91. 
«  GOODS  AND  CHATTELS," 

within  the  Bankruptcy  Acts,  good-will  of  newspaper  passes  as,  12, 159. 

trade-mark  passes  as,  537. 
GOOD-WILL, 

what  is,  17,  25,  45,  58,  74,  128,  139,  156,  172,  206,  385,  462,  588. 

personal  and  local,  distinguished,  69,  462. 

of  profession  and  of  trade,  distinguished,  156,  588. 

of  newspaper,  what  is,  576. 

incapable  of  seizure  by  a  sheriff,  159. 
connection  of,  with  the  business  itself,  189. 
trade  name,  1 72. 

marks,  91,  168,  331,  350,  630. 

trade-marks  cannot  be  severed  from,  331,  447,  487,  492. 
of  trading  business  is  assets,  3,  6,  35,  58. 
of  professional  practice  held  to  be  assets  to  some  extent,  102. 

not  to  be  assets,  46,  588. 
of  partnership  is  assets,  16,  64,  70,  139,  165,  176,  177,  185,  192,  202, 

206,  210,  215,  248. 
of  newspaper  is  partnership  assets,  173,  178. 

"  goods  and  chattels  "  within  the  Bankruptcy  Acts,  12,  159. 
of  partnership  carried  on  under  articles  held  to  survive,  139,  208. 
without  articles  held  to  survive,  9. 

not  to  survive,  14,  64,  139,  165,  185. 

may  not  be  appropriated  by  one  of  the  partners,  75,  122,  149,  202, 
206. 

443 


INDEX. 

GOOD- WILL  —  continued. 

of  medical  practice  held  to  survive,  28. 

of  newspaper  held  not  to  survive,  35. 

of  married  woman's  business  survives  to  her,  131. 

transmission  of,  on  bankruptcy,  69,  323,  575. 

of  public-house  held  to  be  incident  to  the  stock  and  license,  74. 

value  of,  how  ascertained,  462. 
option  under  articles  to  representative  of  deceased  partner  to  retain 

share  in,  enforced,  127. 
value  of  deceased  or  retiring  partner's  interest  in,  how  ascertained,  70, 

156,  158,  176,  177,  206,  208,  215,  238,  248,  260,  451. 
of  share  in  business,  specific  transfer  of,  under  legacy,  not  enforced,  189. 
sale  of,  11,  13,  20,  25,  27,  82,  36,  45,  58,  62,  102,  114,  128,  153,  158, 
168,  172,  176,  185,  220,  238,  248,  406,  423,  479,  485,  576,  588,  639. 
facts  to  be  stated  on,  37,  158,  215,  238. 
sum  payable  on,  20,  25,  27,  32,  156,  158,  260. 
assignment  on,  subject  to  duty  within  the  Stamp  Acts,  128. 
by  executors,  479. 

assignees  in  bankruptcy,  323,  575. 

trade-mark  held  to  pass  on,  without  express  mention,  350,  354. 
name  held  to  pass  on,  without  express  mention,  639. 

not  to  pass  on,  185,  575. 

when  it  can  be  specifically  enforced,  153,  168. 
of  legal  practice  permissible,  1 1 . 

after  vendor  restrained  from  practising  in  Great  Brit- 
ain, 66. 

agreement  for,  not  specifically  enforced,  22,  71. 
of  medical  practice,  implied  contract  on,  220. 
of  public-house,  specific  performance  of  agreement  for,  granted,  43. 

specific  performance  of  agreement  for,  refused,  42,  153. 
breach  of  contract  on,  restrained,  114,  303,  335,  350,  485,  548, 

552,  604. 

after,  vendor  may  set  up  a  similar  business,  1 7,  25,  27, 1 72,  383, 406. 
may  not  set  up  the  same  business,  17,  25,  29,  207,  272,  323, 
385,  423. 

a  similar  business  in  the  same  situation,  25,  36, 172,  323. 
rights  of  purchaser  of,  479,  639. 

held  not  to  be  included  in  partnership  "  property,  credits  and  effects," 
129. 

"  stock  in  trade  and  effects,"  129. 
"  premises,  stock  in  trade,"  etc.,  208. 
"  stock  in  trade,  goods,  chattels,  and  effects,"  260. 
"  estate  and  effects,"  as  ascertained  by  annual  valuation, 
605. 

444 


INDEX. 

GOOD- WILL  —  continued. 

held  to  be  included  in  "  stock  belonging  to  tbe  partnership,"  215. 
partnership  "  premises  and  effects,"  350. 
"  effects  and  things,"  614. 
"property  and  effects,"  615. 
"  GOOD-WILL,"  ETC. 

the  meaning  of  the  expression,  explained,  168. 
"GOURAUD'S  ORIENTAL  CREAM,"  460. 
"  GOVERNMENT  SANITARY  COMPANY,  THE,"  604. 
"  GREAT  MOGUL  "  STAMP  ON  CARDS,  2. 
"  GRENADE  SYRUP,"  334. 
GROSS, 

trade-marks  cannot  be  acquired  in,  447,  487,  492,  630. 

except  by  the  previous  maker  of  the  goods,  492. 
"  GUINEA  COAL  COMPANY,  THE,"  325. 
"  GUINNESS'  STOUT,"  89,  617. 
"  GUNPUTTY  "  YARN,  646. 
GUNS, 

marks  on,  441. 

"HALL'S  VEGETABLE  SICILIAN  HAIR  RENEWER,"  335,  853. 

HALL-MARK, 

transposition  of,  criminally  punishable,  54. 
false  representation  as  to,  285. 

"  HALLETT  AND  CUMSTON,"  391. 

"  HARRISON'S  MUSTARD,"  244. 

"  HARVEY'S  SAUCE,"  160,  344,  346. 

"HAXALL"  FLOUR,  490. 

HEADINGS  ON  COTTON  GOODS,  454,  581,  585. 

HELIOTYPES, 
marks  on,  430. 

"HELMBOLD'S      HIGHLY      CONCENTRATED      COMPOUND 
FLUID   EXTRACT    OF  BUCHU,"  575. 

"HEMY'S     ROYAL    MODERN    TUTOR    FOR    THE     PIANO- 
FORTE," 587. 

"  HENNESSY  &  CO.'S  COGNAC,"  483,  531,  549,  556,  650,  651. 

"  HENRY'S  CALCINED  MAGNESIA,"  48. 

"  HERO  "  GLASS  JARS,  301. 

"  HOBART  FENN  &  CO."  166. 

"  HOLBROOK'S  SCHOOL  APPARATUS,"  263. 

"HOLLOWAY'S  PILLS  AND  OINTMENT,"  106. 

"  HOME  AND  COLONIAL  LIFE  ASSURANCE  COMPANY  (LIM- 
ITED), THE,"  236. 

HONES,  marks  on,  50. 

415 


INDEX. 

"HOOKHAM  AND  POTTAGE,"  398. 
HOOPS  ON  BARRELS 

are  not  trade-marks  registrable  in  the  United  States,  480. 
"HOP  SUPPLEMENT,  ESTCOURT'S,"  449. 
HORSE  BLISTERS, 

marks  on,  209,  388. 
"  HOSTETTER'S   CELEBRATED    STOMACH   BITTERS,"    366, 

652. 
HOTEL, 

name  of  "  Irving  House,"  108. 

"What  Cheer  House,"  212. 
"McCardel  House,"  233. 
"  Wood's  Hotel,"  467. 
"  Station  Hotel,"  520. 
use  of,  on  carriages,  "  Irving  House,"  104. 
"Revere  House,"  111. 
"  Prescott  House,"  266. 
is  assignable,  467. 
belongs  to  lessee  of  hotel,  212,  467. 
HOUSE, 

name  of,  "  Osborne  House,"  323. 
"  Booth's  Theatre,"  524. 
"  Ashford  Lodge,"  631. 
"HOUSEHOLD  WORDS,"  173. 
"  HOWE  "  SEWING-MACHINES,  203,  284,  569. 
"  HOWE'S  BAKERY,"  185. 
"HOWQUA'S  MIXTURE"  TEA,  60. 
HUNGARIAN  NOTES, 

spurious  issue  of,  restrained,  197. 

IDENTICAL, 

marks  need  not  be,  to  constitute  infringement,  100,  138,  184,  250,  256, 
305,  313,  329,  352,  370,  514,  579,  636,  646. 

And  see  COLORABLE  IMITATION. 
registration  of  two,  589. 
substance,  injunction  limited  so  as  not  to  restrain  the  use  of  the  mark 

on  the,  591. 
"ILLUSTRATED," 

the  word,  cannot  be  exclusively  appropriated,  85. 
IMITATION,  COLORABLE.     See  COLORABLE  IMITATION. 
"IMPERIAL  IRON  TUBE  COMPANY,  THE,"  566. 
IMPOSITION 

on  the  public  is  the  test  of  infringement,  215,  223. 

446 


INDEX. 

INDIAN  CASES,  241,  315. 

"Root  Pills,"  180. 
"  INDIA-RUBBER 

Comb  Company,  The,"  475,  476. 
goods,  marks  on,  475,  476,  507,  547. 

INDICTMENT.    See  CHEAT  ;  FALSE  PRETENCES  ;  FORGERY. 
INFANT  INFRINGES 

must  pay  the  costs  of  the  proceedings,  255. 
INFERIORITY  IN  QUALITY 

not  required  to  constitute  infringement,  50,  83,  84,  109,  213. 
no  ground  of  action  where  name  used  is  common,  59. 
INFRINGEMENT, 

principles  on  which,  is  prohibited,  73,  76,  84,  91,  100,  108,  109,  124, 
126,  130,  145,  154,  213,  215,  223,  269,  270,  302,  320,  325,  329,  340, 
354,  407,  413,  466,  477,  580,  649,  665,  667. 

what  constitutes,   73,  76,  89,  109,  123,  138,  213,  223,  234,  241,  256, 
300,  425,  433,  474,  500,  579,  580,  636,  646,  650,  653,  665,  667, 
674. 
marks  need  not  be  identical  to  constitute,  100,  138, 184,  250,  256, 305, 

313,  329,  352,  370,  514,  579,  636,  646,  665,  674. 
probability  of  deception  is  necessary  to  constitute,  53,  65,  72,  73,  84, 
85,   88,   91,   109,   123,   138,  157,  186,  215,  217,  221,  223,  230,  236, 
245,  256,  274,  293,  295,  332,  425,  426,  433,  459,  466,478,488,  529, 
541,  550,  618,  619,  640. 
colorable.     See  COLORABLE  IMITATION. 

fraudulent  intention  is  not  necessary  to  constitute,  63,  99,  109,  157, 
171,  174,  194,  204,  213,  247,  253,  313,  315,  329,  340,387,433,466, 
477,  500,  579,  580,  608,  646. 
progressive,  275,  514. 

imposition  on  the  public  is  the  test  of,  215,  223. 
knowledge  of  the  immediate  purchaser  is  immaterial  in  case  of,  40, 

79,  83,  84,  136,  213,  253,  646. 

equality  of  quality  is  immaterial  in  case  of,  50,  83,  84,  109,  213. 
actual  deception  or  specific  damage  is  not  necessary  to  constitute,  50, 

68,82,  99,  196,  280,  313,  379. 
by  misuse  of  genuine  labels  and  stamps,  126,  253,  441,  549,  556,  650, 

651. 

by  adoption  of  name  tending  to  produce  deception,  256,  636. 
by  engravers,  89. 
by  printer,  113,  130. 

must  be  by  user  on  same  class  of  goods,  314,  559. 
no  injunction  obtainable  in  early  times  to  restrain,  2. 
mode  of  trial  of  action  for,  644. 
of  name  of  newspaper,  what  is,  34. 


INDEX. 

INFRINGEMENT  —  continued. 

of  rights  of  legal  author,  what  is,  49. 
expounded  and  explained,  665,  672,  674. 
where  mark  not  attached  to  the  goods,  672. 
INITIAL   LETTERS, 

trade-marks  consisting  of,  or  containing,  53,  61,  63,  72,  100,  199,  200, 
204,  215,  216,  222,  307,  338,  371,  376,  404,  493,  530,  533,  537,  540, 
567,  568. 

injunction  granted  to  restrain  the  use  of,  in  breach  of  contract,  419. 
INJUNCTION, 

jurisdiction  of  court  to  protect  property  from  injury  by,  197,  665. 
fraud  on  the  public  is  no  ground  for  an,  7,  455,  487,  639. 
enlarged  to  cover  further  fraud,  200. 
limited  to  goods  not  yet  arrived,  370. 
interlocutory,  refused,  where  nothing  had  been  done,  536. 
granted,  though  persons  other  than  the  plaintiffs  interested  in  the 
marks,  80,  196,  243. 

notwithstanding  offer  of  submission  by  defendant,  63,  169,  170, 
171,  235,  261,  411,  663. 

that  no  previous  application  had  been  made  to  defend- 
ant, 169,  280,  653. 

that  defendants  were  ignorant  even  of  plaintiffs'  exist- 
ence, 204. 

that  plaintiffs'  mark  had  been  used  first  by  others,  276. 
on  counter-claim,  to  restrain  use  of  address,  443. 
so  as  not  to  restrain  use  of  mark  on  identical  goods,  591. 
until  certain  events,  591,  599. 

to  restrain  publication  of  catalogue  of  etchings  improperly  ob- 
tained, 98. 

partial  imitation,  100,  138,  184,  250,  256.     And  see  IDENTI- 
CAL MARKS. 

misuse  of  genuine  marks,  126,  253,  441,  549,  556,  650,  651. 
surviving  partner  from  trading  under  a  new  name,  127. 
infringement  by  forwarding  agents,  369. 
soliciting  customers,  114,  141,  207,  385,  566. 
publication  of  statements  as  to  newspaper,  162,  173. 

injurious  to  property,  211. 

the  unauthorized  use  of  trade  name  by  purchaser  of  good- 
will, 185. 

misrepresentations  by  lessees  of  fire-brick  works,  193. 
issue  of  spurious  Hungarian  notes,  197. 
one  partner  from  monopolizing  the  good-will  of  the  partner- 
ship on  dissolution,  202,  566. 

448 


INDEX. 

INJUNCTION  —  continued. 

granted  to  restrain  infringement,  though  plaintiff  had  adopted  an  ad- 
ditional mark,  226,  646. 

purchaser  of  hotel  from  using  plaintiff's  name,  233. 

action  for  damages  for  non-delivery  of  spuriously  marked  goods 

to  indorsee  of  dock-warrants,  239. 
the  appearance  of  a  man's  name  in  connection  with  a  magazine, 

259. 

a  purchaser  from  one  of  two  partners  from  monopolizing  the  part- 
nership style,  268. 

passing  goods  spuriously  marked  into  the  market,  299,  326. 
exact  imitation  only,  557. 

improper  representations  on  dissolution  of  partnership,  566. 
the  use  of  name  of  hotel.     See  HOTEL. 
house.     See  HOUSE. 
man's  own  name,  where  fraud  exists,  106,  117, 124,  148,  333, 

340,  388,  580. 
discontinued  mark,  125. 
spurious  mark,  since  discontinued,  484. 
name  of  publication.     See  MUSICAL  COMPOSITION  ;  PUB- 
LICATION ;  SONG. 
name  of  company.     See  COMPANY. 
moulded  bottles,  551,  652,  653. 
appellation  of  medical  man,  328. 
a  father's  altered  name  by  his  sons,  460. 
labels  and  wrappers,  but  refused  as  to  name  of  goods,  512, 

653. 
name  of  goods  by  persons  who  had  manufactured  for  the 

plaintiff,  517. 

trade-marks  on  goods  sent  to  a  specified  market,  581. 
a  trade-mark  to  which  registration  had  been  refused,  646. 
breach  of  contract  on  sale  of  good-will,  25,  29,  114,  303,  335,  350, 
485,  548,  552. 
by  singer,  112. 
as  to  use  of  initial,  419. 

not  granted,  where  joint  plaintiffs  were  not  entitled  to  joint  relief,  44. 
the  defendant's  book  was  not  represented  to  be  the  plaintiff's,  67. 
plaintiff's  title  not  clear,  134,  145,  191,  246,  284,  374,  391,  410, 

487,  492,  494,  512. 

plaintiffs  set  a  trap  for  the  defendant,  556. 
on  account  of  former  close  business  relations  between  the  parties, 

109. 

unless  plaintiff's  mark  on  vendible  goods  in  the  market,  140, 
215,  223,  234,  264,  301,  339. 
29  419 


INDEX. 

INJUNCTION  —  continued. 

not  granted  to  restrain  sale  of  genuine  goods,  143. 

publication   of  an    unfair  report  of  proceedings  in  a  trade-mark 

case,  190. 

unauthorized  use  of  prize  medal,  218. 
breach  of  covenant  not  to  use  motto,  546. 
a  fair  comparison  of  rival  articles,  574. 
use  of  deceased  partner's  name  by  surviving  partners,  7. 

man's  own  name,  where  no  fraud,  82, 106,  117,  148,  180,  240, 

257,  278,  427,  472,  521,  525,  534,  541,  573,  580. 
moulded  bottles,  157,  608,  628. 
trade  name,  283. 
motion  to  commit  for  breach  of,  77,  115,  200,  245,  463,  570,  595,  633, 

635. 

attachment  issued  for  breach  of,  353. 
INK, 

marks  on,  273,  510. 
INNOCENT  VENDORS, 

price  of  .spuriously  marked  goods  recovered  by,  101. 
INSCRIPTIONS 

on  bottles,  etc.,  18,  31,  163,  248. 
claimed  as  trade-marks,  123,  523,  541. 
INSOLVENCY 

produced  by  defending  an  action  for  infringement  of  trade-mark,  649. 
INSPECTION, 

order  made  for,  531. 
INTENTION 

of  infringer  immaterial,  63,  99,  109,  157,  171, 174,  194,  204,  213,  247, 
253,  313,  315,  329,  340,  387,  433,  466,  477,  500,  579,  580,  608,  646. 
INTERDICT 

granted  in  Scotland  to  restrain  improper  use  of  name  of  sheriff's  of- 
ficer, 438. 
INTERFERENCES 

in  the  United  States  Patent  Office,  399,  417,  437,  496,  554,  627. 
INTERIM  INTERDICT 

refused  in  Scotland  till  after  damages  recovered,  262. 
INVENTION 

of  article  on  which  trade-mark  is  used  is  immaterial,  91,  339,  390, 
580. 

trade-mark  is  immaterial,  138,  410,  554. 
«  INVISIBLE"  FACE  POWDER,  378. 
IRON, 

marks  on,   72,  215,  216,  258,  271,  439,  530,  540,  555,  623,  524,  648. 
And  see  CUTLERY;  STEEL. 

450 


INDEX. 

IRON  —  continued. 

"  iron-stone  "  water-pipes,  612. 

"  Iron  Trade  Circular,  The,"  420. 
"  IRVING  HOTEL,"  104,  108. 

"JAMES'  HORSE  BLISTERS,"  209,  388. 
JARS, 

marks  on,  301,  444,  578. 
"JOHN  BULL,  THE,"  33. 

"JOHN  BULL  AND  BRITANNIA,  THE,"  141. 
"JOHN  DOUGLAS  &  CO."  172. 
"  JOHN  G.  LORING  &  CO."  201. 

"JOHN  C.  RAGSD  ALE  Ammoniated  Dissolved  Bone,"  554. 
"  JOHN  SCOTT  &  CO."  393. 

"JOHNSON'S     AMERICAN    ANODYNE     LINIMENT,     ESTAB- 
LISHED A.  D.  1810,"  404. 
JOINT 

plaintiffs  not  entitled  to  joint  relief,  44. 

JUDICATURE  ACT,  1873,  sec.  25,  sub-s.  8,  564,  594,  606,  607,  631. 
"JULES  JURGENSEN,  COPENHAGEN,"  WATCHES,' 211. 
"JULIENNE"  SOUP,  461. 
JURISDICTION 

of  court,  elements  necessary  to  found,  228,  234. 

of  U.  S.  Circuit  Court  in  cases  of  registered  trade-marks,  613,  629. 
JURY, 

questions  for  the,  49,  56,  72,  82,  92,  120,  167,  338. 

«K.  &  G.  PATENT  ELASTIC"  PENHOLDERS,  167. 
KAINIT, 

marks  on,  397. 

"KEYSTONE  LINE"  OF  STEAMSHIPS,  396. 
"KIRBY'S  neplus  ultra"  NEEDLES,  251. 
KITCHENER, 

marks  on,  116. 

"  L.  H.  &  S."  WINE,  537. 
«  L.  L."  WHISKEY,  228. 
LABELS, 

complicated  stamps  on  leather  cloth  held  not  to  be  trade-marks,  but 

mere,  223. 

LACHES.     See  DELAY. 
"  LACKAWANNA  "  COAL,  327. 
"LACTOPEPTINE"  MEDICINE,  543. 
"LAFERME"  CIGARETTES,  512. 

451 


INDEX. 

"LAIRD'S  BLOOM  OF  YOUTH,  OR  LIQUID  PEARL/' 418. 

"LAKE"  GLASS,  121. 

LANCASTER, 

cases  in  the  Chancery  Court  of,  328,  581. 
LANGUAGES, 

words  in  modern  foreign,  used  as  trade-marks,  51,  334,  411,  581,  647. 

use  of  several,  in  labels,  291,  411,  432,  591. 
LARD, 

marks  on,  425. 
"LATE 

of  Lundy  Foot  &  Co."  107. 

"of  107  Strand,"  117. 

"  Tayler  &  Co.,  J.  Vick  from  the,"  119. 

"  Harpers  &  Moore,"  193. 

«  Leach  &  Clark,"  210. 

"  with  Crockett,"  223. 

"  Robert  &  Walter  Scott,"  268. 

"  operator  at  the  Colton  Dental  Rooms,"  305. 

"  of  Headington  Hill,  Oxford,  and  formerly  of  Mayfair,"  552. 

"  the  works  of  and  partners  and  managers  in  the  Imperial  Tube  Com- 
pany," 566. 

"of  Somerset  Place,  Hoxton,"  602. 
"  LAZENBY'S  HARVEY'S  SAUCE,"  344,  346. 
LEATHER  CLOTH, 

marks  on,  214,  223,  224,  252,  324. 
LEGAL  AUTHOR, 

improper  use  of  name  of,  49. 
"LEOPOLD"  CLOTH,  400. 
"  LEOPOLDSHALL  KAINIT,"  397. 
LETTERS, 

opening,  75,  219,  237,  423. 

trade-marks  consisting  of  or  containing,  53,  61,  63,  72,  100,  199,  200, 
204,  215,  216,  222,  307,  371,  338,  376,404,  493,  530,  533,  537,  540, 
567,  568. 

deception  assisted  by  use  of  small,  47,  107,  212,  247,  305,  398,  534, 
650. 

large,  329. 
LIBEL, 

question  as  to  injunction  to  restrain,  30,  52,  67,  93,  94,  95,  424,  438, 

453,  457,  564,  594,  606,  607. 
LICENSE, 

plaintiff  must  prove  that  defendant  has  no,  228. 

gratuitous  acquiescence  by  owner  in  infringement  is  mere  revocable, 
100,  137. 

452 


INDEX. 

LICENSE  —  continued. 

to  use  trade-mark  and  sue  infringers,  acquiescence  by  owner  of  trade- 
mark must  amount  to,  to  cause  motion  to  commit  to  fail  by  reason 
of  delay,  115. 

to  use  name  on  hotel,  held  to  be  revocable,  233. 

to  use  name  of  hotel  on  coaches  held  to  be  revoked  on  sale  of  hotel 
by  licensor,  266. 

trade-mark  on  goods  made  according  to  patent  by,  284. 

from  foreign  sovereign  to  use  spurious  trade-marks  is  no  defence,  352. 

to  use  a  certain  name  on  a  line  of  steamships,  396. 

to  use  a  certain  partnership  name,  406. 

to  use  a  trade-mark  exclusively  for  a  certain  period,  502. 
"  LICENSED  VICTUALLERS'  RELISH,"  447. 
LICENSOR, 

damages  given  to  exclusive  licensee  against,  489. 
"  LIEBIG'S  EXTRACT  OF  MEAT,"  286. 
LIEN 

on  spuriously  marked  goods  for  costs,  369,  567. 
"  LIEUTENANT  JAMES'  BLISTERING  COMPOUND,"  200. 
LIME  JUICE, 

marks  on,  551,  608. 
LINE 

of  omnibuses,  57. 

steamships,  396. 

LINNELL'S  PAINTINGS,  155. 
"  LINOLEUM,"  536. 
"LION" 

hall-mark,  transposition  of,  54. 

"chop"  cloths,  198. 

mark  registered  in  alternative  shape,  501. 
LIQUORICE, 

marks  on,  234. 

"  LITTLE  RED  BOOK,  THE,"  478. 
"LIVE   AND   LET  LIVE"  OYSTER   AND  DINING   SALOON, 

330. 

"LIVERPOOL"  CLOTH,  400. 
"LLOYD'S  EUXESIS,"  337. 
LOCAL 

and  personal  trade-marks  distinguished,  215. 
"LOCH  KATRINE"  WHISKEY,  452. 
«  LONDON 

conveyance  company's  "  omnibuses,  57.  , 

"  and  Provincial  Law  Assurance  Society,  The,"  88. 

"Manure  Company,  The,"  92. 

453 


INDEX. 

"  LONDON  "  —  continued. 

"Journal,  The,"  175. 

"Club  House"  Gin,  187. 

"  Assurance,  The,"  221. 

"  and  Westminster  Assurance  Corporation,  Limited,  The,"  221. 

"  Dock  "gin,  240. 

"  Society,"  345. 

"  and  County  Banking  Company,  The,"  618. 
"LONE  JACK"  SMOKING  TOBACCO,  669. 
LORD  BYRON, 

unauthorized  use  of  name  of,  23. 
LOZENGES, 

marks  on,  227,  532. 
"LUNDY  FOOT  &  CO.'S"  SNUFF,  107. 

"M.  &  C."  WINE,  533,  567. 
MACARONI, 

marks  on,  577. 
"MACASSAR  OIL,"  386. 
"McCARDEL  HOUSE,  THE,"  233. 
"McGOWAN  BROTHERS  PUMP  AND  MACHINE  CO.,   THE," 

406. 

"MADAME  LOUISE,"  381. 
MAGAZINE.     See  PUBLICATION. 
"MAGIC  CURE,  THE,"  478. 
"MAGNOLIA"  WHISKEY,  437. 
"MAISON  BOISSIER  DE  PARIS,"  498. 
"MAMMOTH  WARDROBE,  THE,"  363. 
MAN'S  OWN  NAME.     See  NAME. 
"MANNY  HARVESTER,  THE,"  412. 
"  MANUFACTURER  AND  PATENTEE,"  343. 

misuse  by  assignees  of  name  of  former,  223. 
"MARK  TWAIN,"  429. 
MARKET, 

plaintiff's  goods  must  have  been  a  vendible  article  in  the,  140,  215,  223, 
234,  264,  301,  339. 

marks  on  goods  sent  to  a  special,  581,  585,  646. 

St.  Mills  Flour,  405. 
"MARSHALL'S  CANADA  PLATES,"  648. 

"patent  thread,"  316. 
"MASON  "  JARS,  444,  578. 
MASONIC  EMBLEMS, 

question  as  to  registration  of,  in  the  United  States,  405,  634. 

454 


INDEX. 

MASSACHUSETTS  STATUTE 

(Gen.  St.  c.  56)  respecting  trade  names,  201,  283. 
MASTER 

responsible  for  fraud  of  servant,  321,  583. 
MATCHES, 

marks  on,  91,  245,  485,  514. 
MEDAL, 

no  exclusive  right  in  a,  218,  223,  448. 

registered  in  America,  516. 
MEDICAL 

man,  injunction  to  restrain  use  of  appellation  of,  328. 

practice,  sale  of,  28,  102,  220,  588. 

preparation,  4,  18,  19,  24,  26,  31,  38,  44,  48,  59,  68,  87,  90,  93,  97, 
99,  101,  103,  106,  109,  110,  180,  230,  279,  281,  288,  291,  333,  348, 
376,  389,  404,  424,  458,  478,  493,  497,  502,  516,  517,  543,  562,  575, 
580,  626,  628. 

"MEDICATED  MEXICAN  BALM,"  73. 
"MEEN  FUN"  SKIN  POWDER,   191. 
"  MEXEELY'S  "  BELLS,  472. 
MERCHANDISE  MARKS  ACT,  1862,  THE,  267. 

prosecution  under,  may  be  compromised,  457. 

"  MERCHANT  BANKING  COMPANY  OF  LONDON,  THE,"  619. 
<•  MERRIMACK  COTTON  PRINTS,"  134. 
METAL  GOODS, 

marks  on,  616,  621,  641.' 

And  see  CUTLERY;  EDGE  TOOLS;  IROX;  STEEL. 
MILK, 

marks,  on,  370. 
"  MINNIE  DALE," 

song  of,  132,  136. 
"  MINTON  "  TILES,  548. 

MISREPRESENTATIONS.     See  DEFENCE  ;   DISENTITLED  ;   REPRE- 
SENTATIONS. 
MISSOURI, 

infringement  of  English  trade-marks  criminally  punishable  in,  436. 
MODE  OF 

making  up  bundles  of  silk,  217. 

trial  of  action  for  infringement,  644. 
"  MOET'S  CHAMPAGNE,"  235,  533,  567. 
"  MOLINE  "  PLOUGHS,  339. 

MONOGRAM  PROTECTED  AS  TRADE-MARK,  665. 
"  MOORE'S  PILLULES,"  478. 

"MORISON'S  UNIVERSAL  MEDICINES,"  68,  110. 
"  MORSE'S  INDIAN  ROOT  PILLS,"  180. 

455 


INDEX. 

MOTTO, 

covenant  not  to  use,  546. 

"  MRS.  WINSLOW'S  SOOTHING  SYRUP,"  291. 
MUSICAL  COMPOSITION,  105. 

And  see  PUBLICATION;  SONG. 
MUSTARD, 

marks  on,  244,  579. 

NAME 

may  become  a  mere  ordinary  transferable  trade-mark,  215,  223,  257, 

279,  580,  666. 

not  in  all  cases  assignable  as  a  trade-mark,  222,  223. 
colorable  authority  to  use,  76,  123,  243,  298,  390,  391,  409,  533,  534. 
of  celebrated  person  may  be  used  as  a  trade-mark,  184. 
of  true  maker,  sale  of  goods  stamped  with,  not  restrained,  143. 
of  inventor  of  machine  appropriated  by  another  person  as  his  trade- 
mark, 284. 
no  defence  that  plaintiff's  was  used  in  his  mark,  and  has  not  been 

copied,  384. 

the  fact  that  defendant's  is  contained  in  the  spurious  mark  is  no  de- 
fence, 198,  226,  269,  280,  301,  310,  329,  609,  646. 

may  be  an  element  of  defence,  227,  232,  251,  363,  484,  608. 
right  of  property  in,  exists,  264. 

but  not  apart  from  business,  312. 

of  house,  no  right  of  property  in,  apart  from  business,  631. 
use  of,  not  restrained,  except  when  a  right  of  property  is  concerned, 

93. 

on  shop,  use  of,  107,  117,  149,  254,  268,  304,  323,  363,  381. 
use  of  man's  own  restrained,  where  fraud  exists,  106,  117,  124,  148, 
333,  340,  388,  580,  668. 

not  restrained  where  no  fraud,  82,  106,  117,  148,  180,  240,  257, 

278,  427,  472,  521,  525,  534,  541,  573,  580. 
cases  reviewed  and  explained,  668. 

whether  used  alone  or  in  combination,  560. 
criminally  punishable,  when  fraudulent,  120. 
in  connection  with  a  certain  magazine,  restrained,  259. 
not  restrained  by  reason  of  a  sale  by  his  assignee  in  bankruptcy, 

575. 

unauthorized  use  of  poet's,  restrained,  23. 
legal  author's,  49. 
painter's,  not  restrained,  52. 

not  amounting  to  forgery,  155. 

person's,  as  that  of  a  director  of  a  company,  restrained,  86. 
former  maker's,  so  as  to  disentitle,  91. 

456 


INDEX. 

NAME  —  continued. 

unauthorized  use  of  by  purchaser  of  good- will  restrained,  185. 
of  partnership  held  to  survive,  55,  189. 
passes  on  sale  of  good-will,  639. 
may  not  be  appropriated  by  one  of  the  partners,  75. 
by  a  purchaser  from  one  of  the  partners,  268. 
used  by  continuing  partner  where  liability   will  be  thrown 

upon  outgoing  partner,  393,  639. 

changed  by  surviving  partner  while  representative  of  de- 
ceased partner  has  an  option  of  continuing  in  the  business, 
127. 

of  deceased  or  retiring  partner  may  be  used  by  surviving  or  continu- 
ing partner,  if  no  liability  will  be  thrown  upon  his  estate,  7. 

not  be  used  by  surviving  or  continuing  partner  if  liability 

will  be  thrown  upon  his  estate,  260. 
partner  may  not  be  used  by  surviving  partner  in  Massachusetts 

without  the  consent  of  his  representatives,  201,  283. 
of  predecessors  in  business,  without  more,  may  be  continued  in  use  as 
trade-mark,  223,  666. 

early  painter,  use  of,  no  warranty,  8. 
modern  painter,  use  of,  may  be  warranty,  56. 
solicitor,  agreement  to  allow  use  of,  on  retirement,  71. 
line  of  omnibuses,  57. 

steamships,  396. 

sheriffs  officer,  improper  use  of,  438. 
play,  440. 

place  of  business  may  be  used  without  fraud,  521. 
proprietor  of  theatre,  524. 
publication,  copyright  in,  asserted,  638. 
And  see  PUBLICATION. 
company.     See  COMPANY. 

musical  composition.     See  MUSICAL  COMPOSITION  ;  PUBLICA- 
TION; SOXG. 
society.     See  COMPANY. 
song.     See  SONG. 
"  NATIONAL 

Advocate,  The,"  41. 
"  Police  Gazette,  The,"  270. 
NATURAL  PRODUCTS, 

marks  on,  327,  354,  397,  465,  509,  529,  599,  633. 
name  descriptive  of,  cannot  be  appropriated,  205. 
NEEDLES, 

marks  on,  123,  138,  251. 

457 


INDEX. 

"NEW 

Era,  The,"  65,  550. 

"  Manny  Harvester,  The,"  412. 

"York"  glass,  121. 

"  Cutlery  Company,  The,"  491. 
NEWSPAPER, 

good-will  of,  what  is,  576. 

is  assets  of  proprietor,  3,  35,  173. 

partnership,  173,  178. 

is  "goods  and  chattels"  within  the  Bankruptcy  Acts,  12,  159. 
sale  of,  450. 

question  of  title  to,  246. 
title  of,  is  property,  1 74. 
rights  of  editor  of,  39,  181,  450. 
proprietor  of,  not  disentitled  by  non-registration  at  the  Stamp  Office, 

141. 

right  of  publication  of,  incapable  of  seizure  by  a  sheriff,  159. 
injunction  granted  to  restrain  publication  of  statements  as  to,  162, 

173. 
motion  to  commit  publisher  of,  635. 

And  see  PUBLICATION. 
"NIGHT  BLOOMING  CEREUS,"  232. 
«  NINETEENTH  CENTURY,  THE,"  539. 
NOM  DE  PLUME  OF  AUTHOR, 

improper  use  of,  restrained,  429. 
NOMINAL  DAMAGES 

given  for  infringement  of  right,  50,  59,  68,  82,  99. 
more  than,  given  where  specific  damage  proved,  83. 
"  NORFOLK  WORKS,  SHEFFIELD,"  442. 
" NORTHERN 

Daily  Express,  The,"  162. 
"Weekly  Standard,  The,"  162. 
NOTES 

on  register  of  trade-marks,  586,  610,  611,  622,  641,  643,  654. 
NOTICE 

by  plaintiff  to  defendant  that  he  is  infringing  the  plaintiffs  rights  does 

not  alter  the  rights  of  the  parties,  72. 
need  not  be  given  by  plaintiff  to  defendant  before  taking  proceedings, 

79,  81,  169,  280. 
of  dissolution  of  partnership  may  not  be  published  until  expiration  of 

term,  75. 
"NOURISHING  STOUT,"  431. 

458 


INDEX. 

NUMERALS 

as  trade-marks,  53,  126,  257,  269,  302,  382,  411,  426,  522,  542,  557, 
581,  585,  673. 

OFFER  OF  SUBMISSION, 

must  be  complete  for  defendant  to  escape  paying  costs,  79,  136,  169, 

170,  171,  234,  235,  321,  369,  583. 
OFFICIAL 

mark  cannot  become  a  trade-mark,  523. 
"  OHIO  LINIMENT,"  99,  109. 
OIL, 

marks  on,  357,  455,  486,  487,  517,  597. 
"  OLD  LONDON  DOCK  GIN,"  240. 

"  Moore's  Pictorial  Almanack,"  86. 
"  OLDFIELD  LANE  DOCTOR,  THE,"  328. 
OMNIBUSES, 

imitation  of  line  of,  restrained,  57. 

See  CONVEYANCES. 
OPENING  LETTERS,  79,  219,  237. 
OPTION 

of  representative  of  deceased  partner  to  continue  in  business,  pro- 
tected, 127. 

surviving  partner  to  take  over  partnership  business,  protected,  215. 
ORDINARY  PURCHASER, 

deception  of,  49,  72,91,   123,  138,  148,   154,  223,  245,  247,  256,  293, 

329,  370,  379,  425,  426,  466,  541,  579,  580,  636,  650,  651,  653. 
"  OREGON  CENTRAL  RAILWAY  COMPANY,  THE,"  318. 
«  ORIGINAL 

The,"  212,  230,  344,  346,  351,  424,  534,  602. 

invention  of  article  on  which  the  trade-mark  is  used  is  immaterial,  91, 
339,  390,  580. 

trade-mark  is  immaterial,  138,  410,  554. 

maker  has  no  claim  to  inventions  made  in  another's  service,  534,  602. 
"  OSBORNE  HOUSE,"  323. 
"  OUR  YOUNG  FOLKS,"  410. 
"OX"  MUSTARD,  244. 
OYSTERS, 

marks  on,  625. 
OYSTER  SALOON, 

"  Live  and  Let  Live,"   330. 

PACKAGE, 

size,  shape,  and  color  of,  not  capable  of  appropriation,  484. 
will  be  protected  in  U.  S.  667,  674. 

459 


INDEX. 

"PAIN  KILLER,  PERRY  DAVIS',"  103,  281. 
PAINTER, 

use  of  name  of  early,  no  warranty,  8. 
modern,  may  be  warranty,  56. 
not  restrained,  52. 

counterfeited  name  of,  on  work  of  art,  155. 
PAINTS, 

marks  on,  402,  471,  511,  573.' 
"PARAFFIN  OIL,"  205. 

"  PARSONS'  PURGATIVE  PILLS,  P. P.P."  404. 
PARTIAL  IMITATION,  100,  138,  184,  250,  256,  305,  313,  352,  379. 

See  COLORABLE  IMITATION. 
PARTIES 

other  than  the  plaintiffs  interested  in  the  marks,  injunction  granted 

though,  80,  196,  243. 
PARTNERSHIP, 

trade-marks  of  the  partners  become  the  property  of   the,  222,  399, 
408,  437,  502,  561,  664. 

may  not  be  appropriated  by  one  of  the  partners,  455,  664. 
without  articles,  good-will  of  held  to  survive,  9. 
not  to  survive,  14,  64,  139,  165,  185. 

good-will  of,  held  to  be  assets,  16,  64,  70,  139,  165,  176,  177,  185,  192, 
202,  206,  210,  215,  248. 

to  survive  to  surviving  partner  under  the  articles,  139,  208. 
medical,  held  to  survive,  28. 
newspaper  is  assets  of,  173,  178. 
name  of,  held  to  survive,  55,  189. 

pass  on  sale  of  good-will,  639. 

may  not  be  appropriated  by  one  of  the  partners,  75. 

by  a  purchaser  from  one  of  the  partners,  268. 
used  by  continuing  partner,  when  liability  will  be  thrown 

upon  out-going  partner,  393,  639. 

changed  by  surviving  partner  while  representative  of  de- 
ceased partner  has  an  option  of  continuing  in  the  business, 
127. 

deceased  or  retiring  member  of,  may  be  used  by  surviving  or  con- 
tinuing partner,  if  no  liability  will  be  thrown  upon  his  es- 
tate, 7. 

may  not  be  used  by  surviving  or  continuing  partner,  if  lia- 
bility will  be  thrown  upon  his  estate,  260. 

member  of,  may  not  be  used  by  surviving  partners  in  Massa- 
chusetts without  the  consent  of  his  representatives,  201,  283. 
sale  of  one  partner's  interest  in  name  and  trade-mark  of,  refused,  231. 

460 


INDEX. 

PARTNERSHIP  —  continued. 

rights  of  part  owner  of  business  purchasing  the  remaining  interests, 
162,  479. 

premises,  specific  transfer  of  share  of  good-will  of,  under  legacy,  not 
enforced,  189. 

agreement  for  dissolution  of,  and  purchase  of  the  practice,  71. 

notices  of  dissolution  of,  may  not  be  published  until  expiration  of  term, 
75. 

rights  of  partners  on  dissolution  of,  37,  122,  149,  156,  172,  173,  176, 
177,  180,  202,  206,  207,  210,  215,  238,  248,  260,  368,  383,  393,406, 
408,  437,  455,  548,  561,  566,  585,  639,  664. 

value  of  deceased  or  retiring  partner's  interest  in  good-will  of  how  as- 
certained, 70,  156, 158,  176,  177,  206,  208,  215,  238,  248,  260,  451. 

retiring  member  of,  compelled  to  quit  trade  altogether,  5. 
in  a  certain  locality,  25,  29,  172. 

specific  performance  granted  of  agreement  between  solicitors  on  dis- 
solution of,  135. 

"  property,  credits  and  effects,"  good- will  held  not  to  be  included  in, 
129. 

"  stock  in  trade  and  effects,"  nor  in,  129. 

"  premises,  stock  in  trade,"  etc.,  nor  in,  208. 

"  stock  in  trade,  goods,  chattels  and  effects,"  nor  in,  260. 

"  estate  and  effects,"  as  ascertained  by  annual  valuation,  nor  in,  605. 

"  stock  belonging  to  the,"  good-will  held  to  be  included  in  the, 
215. 

"  premises  and  effects,"  and  in,  350. 

"  effects  and  things,"  and  in,  614. 

"  property  and  effects,"  and  in,  615. 
PATENT, 

trade-mark  distinguished  from,  84. 

plaintiff  disentitled  by  improper  use  of  the  word,  116,  223,  267,  288, 
824,  343,  444,  528. 

not  disentitled  by  improper  use  of  the  word,  40,  119,  142,  214, 

267,  304,  316,  384. 
disentitled  by  improper  use  of  marks  on  articles  made  under,  167. 

article  may  be  stated  to  be  made  according  to  expired,  119,  205,  322, 
416,  474,  528,  578. 

when  name  applied  to  goods  made  under,  may  be  generally  used,  205, 
474,  528,  536,  561,  578. 

"  Plumbago  Crucibles,"  267. 

word  descriptive  of  publici  juris,  659. 
"PECTORINE"  458. 
PENCILS, 

marks  on,  278,  481. 

461 


INDEX. 

PENS, 

marks  on,  126,  269,  568,  610,  611,  637. 
"PEPPER'S  EXTRA  SIGNAL  OIL,"  455,487. 
PERFUMES, 

marks  on.     See  TOILET. 

"PERRY'S  MEDICATED  MEXICAN  BALM,"  73. 
"PERRY  DAVIS'  PAIN  KILLER,"  105,  281. 
"PERSIAN  THREAD,"  78,  83,  84,  124. 
PERSONAL, 

a  trade-mark  may  be  so,  as  to  be  incapable  of  assignment  or  use  by 

assignee,  222,  223,  521,  575. 
and  local  trade-marks  distinguished,  215. 
assets,  trade-mark  is,  80,  215,  337. 
good-will  of  newspaper  is,  3. 
shop  is,  3,  58. 
public  house  is,  6. 
partnership  is,  16,  64,  70,  139,  165,  176,  177,  185,   192,  202, 

206,  210,  215,  248. 
legal  practice  is  not,  46. 
medical  practice  held  to  be  to  some  extent,  102. 

held  not  to  be,  588. 
"PESSENDEDE"  WATCHES,  51. 
"PHARAOH'S  SERPENTS,"  253. 

"PHELAN  AND  COLLENDER'S"  BILLIARD  TABLES,  479. 
"PHOTOGRAPHIC  NEWS,  THE,"  181. 
PIANOFORTES, 
marks  on,  525. 
PICKLES, 

marks  on,  274. 

And  see  SAUCES. 
«  PICTORIAL," 

the  word,  cannot  be  exclusively  appropriated,  85. 
"  Almanack,  The,"  85. 
PICTURE.     See  PAINTER. 
"PIG  BRAND"  LARD,  425. 
"PIKE'S  MAGNOLIA  WHISKEY,"  666. 
PILLS, 

marks  on,  93,  106,  180,  404,  478,  580. 
PINS, 

marks  on,  119. 
PIPES, 

marks  on,  243. 
PISTOLS, 

marks  on,  249. 

462 


INDEX. 

PLOUGHS, 

marks  on,  53,  339,  596. 
PLUMBAGO  CRUCIBLES, 

marks  on,  267. 
POET, 

unauthorized  use  of  name  of,  restrained,  23. 
"  POROUS  PLASTERS,"  626. 
PORTER, 

marks  on.     See  BEER. 

"PORTER'S  SPIRIT  OF  THE  TIMES,"   178. 
POTTERY, 

marks  on,  96. 

"  PRAIRIE  FLOWER  "  CIGARS,  433. 
"  PRESCOTT  HOUSE"  HOTEL,  266. 
PRICE 

of  spuriously  marked  goods  recovered  by  innocent  vendors,  101. 
"  PRIME  LEAF  LARD,"  425. 
"  PRINCE'S  METALLIC  PAINT,"  573. 
PRINCIPAL 

responsible  for  fraud  of  agent,  321. 
PRINCIPLES 

on  which  infringement  of  trade-marks  is  prohibited,  73,  76,  84,  91, 
100,   108,   109,  124,   126,   130,   145,  154,  213,  215,  223,  269,270, 
302,  320,  325,  329,  340,  354,  407,  413,  466,  477,  580,  649. 
protection  is  given  in  cases  of  trade  name,  325,  477,  639. 

of  construction,  names  indicative  of,  322,  413,  477,  528. 

And  see  PROCESS  OF  MANUFACTURE. 
PRINTERS, 

infringement  by,  113,  130. 

rollers,  marks  on,  630. 
PRIZE  MEDAL, 

no  exclusive  right  in  a,  218,  223,  448. 

registered  in  America,  516. 
PROCESS  OF  MANUFACTURE, 

marks  indicative  of,  286,  388,  536,  560. 

And  see  PRINCIPLES  OF  CONSTRUCTION. 
PROFESSION, 

good-will  of,  distinguished  from  good-will  of  trade,  156,  588. 
PROFESSOR, 

false  assumption  of  title  of,  held  not  to  disentitle,  106. 
PROPERTY, 

jurisdiction  of  court  to  prevent  injury  to,  by  injunction,  197,  223. 

right  of,  in  trade-mark  denied,  73,  130. 

463 


INDEX. 

PROPERTY  —  continued. 

right  of  in  trade-mark  asserted,  106,  121,  145,  174,  213,  215,  223, 
249,  253,   257,  320,  329,  354,  413,  477,  541. 
not  limited  by  territorial  bounds,  249. 
in  man's  name  asserted,  264. 

but  not  apart  from  business,  312. 

in  name  of  house  cannot  exist  apart  from  business,  631. 
in  prize  medal  denied,  218. 
PUBLIC, 

fraud  on  the,  is  no  ground  for  an  injunction,  7,  455,  487,  639. 
is  ground  for  refusing  an  injunction,  143. 
damages  for  breach  of  contract,  146. 
specific  performance  of  contract,  209. 
•what  is.     See  ORDINARY  PURCHASER. 

mere  continued  use  of  name  of  predecessor  in  business  as  trade- 
mark is  not,  223. 

imposition  on  the,  is  the  test  of  infringement,  215,  223. 
house,  good-will  of,  is  personal  assets,  6. 
"  PUBLIC  CORRESPONDENT,  THE,"  246. 
PUBLICATION, 

name  of,  right  of  property  in,  asserted,  174. 
but  only  after  actual  issue,  264. 
copyright  in  asserted,  638. 

not  protected  by  registration  as  copyright,  246,  265,  292. 
infringement  of,  what  is,  34. 

restrained,   10,   15,  17,  33,  34,  39,  141,  173,  174,  175,  270, 

317,  345,403,  420,  587,  638. 

not  restrained,  41,  65,  246,  264,  265,  295,  320,  410,  503, 
539,  550. 

And  see  NEWSPAPER  ;  SONG, 
«  PUNCH,"  320. 
PURCHASER, 

deception  of.     See  ORDINARY  PURCHASER. 
«  PYRETIC  SALINE,"  288. 

QUALITY, 

marks  merely  indicative  of,  cannot  be  appropriated,  59,  85,  100,  121, 
187,  226,  232,  236,  269,  279,  289,  339,  410,  431,  541,  557,  581,  626. 
And  see  COMMON  MARKS  ;  DESCRIPTIVE  WORDS. 

trade-marks  varying  to  denote,  339,  342,  367,  400,  636,  650,  651. 

transfer  of  marks  indicative  of  one  quality  to  goods  of  another  re- 
strained, 126,  253,  441,  549,  556,  650,  651. 

equality  of,  no  defence,  50,  83,  84,  109,  213. 

inferiority  of,  no  ground  of  action  where  name  used  is  common,  59,  91. 

464 


INDEX. 

QUESTIONS  FOR  THE  JURY,  49,  56,  72,  82,  92,   120,   167,   338, 

648. 

as  to  construction  of  contracts  for  supply  of  goods,  216,  648. 
of  title.     See  TITLE. 

"  RADSTOCK  "  COAL,  599,  633. 
RAILWAY  COMPANY, 

name  of,  318. 

"RAMSAY"  FIRE-BRICKS,  194. 
"  RANSOME'S  PATENT"  PLOUGHSHARES,  53. 
"  RAZOR  STEEL,"  362. 
"  READING  SAUCE,"  351. 
"REAL  JOHN  BULL,  THE,"  33. 

RECTIFICATION  OF  REGISTER.    See  REGISTRATION  (OF  TRADE- 
MARKS IN  ENGLAND). 
"  REEVES  &  CO."  368. 
"  REGISTERED," 

the  word,  will  not  be  registered  in  England,  515. 
REGISTRATION 

at  Stamp  Office,  proprietor  of  newspaper  not  disentitled  by  want  of, 

141. 

as  copyright,  name  of  newspaper  not  protected  by,  246,  265,  292. 
as  design  described  as  patent,  304. 

of  trade-marks  in  England,  under  the  Trade-Marks  Registration  Acts, 
1875-6-7. 

question  as  to,  how  to  be  tried,  569. 
to  be  tried  by  special  case,  535. 
motion,  505,  598. 
action,  569. 

adjourned  summons,  601. 
advertisement  a  necessary  preliminary  to,  515. 
of  two  identical  old  marks,  589. 
of  old  marks  for  part  of  a  class,  555,  616,  623,  643. 

up  to  three,  but  not  more,  558,  589,  610,  611,  616. 
of  new  marks  for  part  of  a  class,  refused,  645. 

up  to  three,  with  consent,  but  not  otherwise,  558,  645. 
granted  in  a  representative  form,  540,  622. 

with  limitation  as  to  mode  of  user,  641,  654. 

locality  of  user,  643. 
after  refusal  in  Germany,  642. 
subject  to  perfection  of  title  with  Cutlers'  Co.  643. 
notwithstanding  allegations  of  similarity,  592,  597. 
prohibition  of  Commissioners  of  Patents,  647. 
30  465 


INDEX. 

REGISTRATION  —  continued. 

of  trade-marks  in    England,  under  the    Trade-Marks   Registration 
Acts,  1875-6-7. 

directed  to  proceed,  though  the  marks  were  placed  in  the  second 

class  by  the  Committee  of  Experts,  632. 
refused  to  words  adopted  since  the  Act,  510. 
word  "  Registered,"  515. 
a  single  letter,  568. 
marks  too  similar,  545,  616,  621,  642. 
marks  used  by  more  than  three  makers,  593. 
marks  previously  used  in  one  class  as  new  marks  in  another, 

616. 
a  new  mark  for  a  class  of  goods  for  part  of  which  alone  an 

old  mark  was  registered,  655. 
deceptive  or  descriptive  words,  625. 
descriptive  words,  626. 

notes  appended  to,  586,  610,  611,  622,  637,  641,  643,  654. 
notice  to  be  given  to  registrar  of  opposition  to,  601. 
rescinded  on  application  of  proprietor,  620. 

as  to  part  of  a  class,  623. 

rectified  on  application  of  proprietor,  as  to  the  address,  624. 
rectification  of,  by  transfer  to  a  new  name,  refused,  630. 
rectification  of,  by  expunging  wrongful  entry,  granted,  630. 
question  as  to  similarity  of  marks  offered  for,  to  be  deter- 
mined by  appearance  in  actual  use,  616,  621. 
in  breach  of  contract,  injunction  granted  to  restrain,  530. 
costs  of  questions  as  to,  593,  616,  621,  626,  637. 
position  of  Commissioners  of  Patents  with  respect  to,  515,  540> 
647. 

Committee  of  Experts  with  respect  to,  586,  622,  632. 
injunctions  granted  to  restrain  infringement  of  registered  marks, 
495,  609. 

to  restrain  infringement  of  unregistered  marks,  583,  646. 
of  trade-marks   in  America,  under  the  United   States  Act  of  1870 
(Revised  Statutes,  sections  4937-4947). 
is  a  proper  mode  of  obtaining  the  exclusive  use  of  a  mark,  341, 

380,  446,  508,  544. 
not  to  be  granted  to  a  design,  582. 
for  too  wide  a  class  is  bad,  402. 

not  necessary  to  entitle  to  remedy  for  infringement,  352. 
gives  no  right  against  valid  old  marks,  511. 

Commissioner's  certificate    of,  not  conclusive  as   to  validity  of 
mark,  373. 

466 


INDEX. 

REGISTRATION  —  continued. 

of  trade-marks  in  America,  under  the  United    States  Act  of    1870 
(Revised  Statutes,  sections  4937-4947). 
cannot  be  cancelled,  though  wrongful,  399. 
separate  applications  for,  held  to  be  necessary,  342. 
declaration  on  oath  as  to  the  right  to  the  mark  must  be  filed, 
401. 

must  be  made  in  substance,  469. 
in  the  name  of  a  firm,  and  not  in  the  names  of  the  individual 

partners,  is  good,  402. 
for  "  paints  "  generally,  is  good,  402. 
claim  for  "  alcoholic  spirits  "  is  good,  470. 
claim  for  "  fancy  goods  "  is  too  general,  600. 
essential  and  non-essential  parts  must  be  distinguished  on  ap- 
plication for,  468, 

only  one  fac-simile  showing  mode  of  use  need  be  produced  on  ap- 
plication for,  553. 

fees  paid  upon  application  for,  only  recoverable  in  case  of  gen- 
uine mistake,  584. 
in  questions  of,  all  matters  relating  to  the  ownership  of  the  mark 

to  be  investigated,  627. 

position  of  Commissioner  of  Patents  with  respect  to,  373,  525. 
jurisdiction  of  United  States  Circuit  Courts  with  respect  to  regis- 
tered trade-marks,  613,  629. 

granted,  notwithstanding  objections,  342,  358,  359,  360,  361,  371, 
375,  471,  473,  497,  518,  525,  563,  565. 

notwithstanding  prior  registration  by  another,  417. 
to  name  of  person,  firm,  or  corporation,  as  an  old  mark,  358, 
476,  507. 

numerals,  382,  557. 
alternative  marks,  394,  501,  544. 
device  of  a  crown,  402. 
form  of  carpet-stick,  428. 

mark  invented,  but  not  actually  used,  456,  627. 
geographical  mark,  565. 
masonic  emblems,  634. 

refused  to  descriptive  marks,  357,  362,  376,   377,  378,412, 
416,  422,  504,  612. 
figures,  527, 

geographical  marks,  399,  405. 
masonic  emblems,  405. 

deceptive  or  descriptive  marks,  422,  493,  571,  577, 
mark  not  used  on  "  goods  or  merchandise,"  464. 
marks  too  similar  to  others,  486,  490,  506. 

467 


INDEX. 

REGISTRATION  —  continued. 

of  trade-marks  in  America,  under  the  United  States  Act    of    1870 
(Revised  Statutes,  sections  4937-4947). 

refused  to  name  of  corporation  as  a  new  mark,  491. 
numerals,  522. 
name  of  patented  article,  578. 

formerly  patented  article,  416. 
mark  become  common,  596. 
hoops  on  barrels,  480. 
collar-box,  538. 
strip  of  leaf-tobacco,  572. 
infringement  of  registered  mark  must'  be  on  goods  of    the 

same  kind,  430. 
RENEWAL 

of  genuine  marks  on  genuine  goods  is  legitimate,  130. 
REPRESENTATIONS, 

trade-marks  containing  false,  cannot  be  acquired,  223. 
plaintiff  disentitled  by  his  own  false,  60,  73,  90,  91,  133,  144,  191, 
223,  232,  267,  308,  418,  434,  562,  575,  628. 

however  apparent  they  may  be,  223. 

not  disentitled    by  his  own  false,    10,  106,  132,  136,  180,  195, 
276,  323,  325,  348,  483,  587,  591. 

when  merely  collateral,  291,  384. 
that  one  man  is  carrying  on  another's  business,  237,  247,  268,  272, 

297,  304,  323,541. 

REPRESENTATIVE  REGISTRATION,  540,  622. 
RESTRAINT  OF  TRADE, 

retiring  partner  compelled  to  quit  trade  altogether,  5. 

in  a  certain  locality,  25,  29,  172. 

vendor  of  good-will  of  business  restrained  from  trading  in  a  certain 
locality,  36,  114,  168,  303. 

using  old  firm  name,  272,  484. 
solicitor's    practice    restrained    from    practising    in    Great 

Britain,  66. 

trade  secret  restrained  from  using  secret,  36. 
one  of    two   partners    restrained   from   monopolizing  a  part   of   the 

business  after  dissolution  of  partnership,  202. 
contract  by  attorney  to  retire  from  practice,  etc.,  good  in  law,  11. 
specific  performance  of,  not  enforced,  22. 

See  GOOD- WILL;  PARTNERSHIP. 
"REVERE  HOUSE,  THE,"  111. 
RIGHT  OF  PROPERTY 

in  trade-mark  denied,  73,  130. 

468 


INDEX. 

RIGHT  OF  PROPERTY  —  continued. 

in  trade-mark  asserted,  106,  121,  145,  174,  213,  215,  223,  249,  253, 
257,  320,  329,  354,  413,  477,  541. 

infringement  of,  nominal  damages  given  for,  50,  59,  68,  82,  99. 
"RISING  SUN"  STOVE  POLISH,  445. 
«  ROBERTS'  RAZOR-STEEL  SCISSORS,"  359. 

"  diamond-edged  razors,"  360,  361. 
"  RODGERS'  CUTLERY,"  82,  115,  352,  442. 
"  ROGER  WILLIAMS  "  LONG  CLOTH,  184. 
"  ROSE  &  CO.'S  "  LIME  JUICE,  551,  608. 
"ROYAL"  BAKING  POWDER,  656. 

flavoring  extract,  656. 
"RUBBER  CLOTHING  COMPANY,  THE,"  507. 

«  S.  &  H.  (CROWN)  "  IRON,  216. 

"S.  P."  SNUFF,  620. 

SAFES, 

marks  on,  255. 
"  ST.  JAMES' 

Evening  Post,  The,"  3. 

"  Chronicle,  The,"  159. 

cigarettes,  542. 

SALE  OF  MARK,  with  place  of  manufacture,  lawful  in  U.  S.  666. 
SALERATUS, 

marks  on,  448. 
SAUCES, 

marks    on,  117,    160,  169,  170,    344,  346,  351,  407,  436,  447,  513, 

526,  589. 
SCANDAL, 

exceptions  for,  414. 

"  SCHIEDAM  SCHNAPPS,"  179,  390,  415,  434,  653. 
SCHOOL  APPARATUS, 

marks  on,  263. 

"  SCHWEITZER'S  COCOATINA,"  298. 
"SCHWEPPE'S  SODA  WATER,"  157. 
SCOTCH  CASES,  34,  35,  39,  94,  227,  262,  413,  438,  452,  588. 

practice  as  to  interim  interdict,  262. 
"  SCOTT'S  COMMENTARY  ON  THE  BIBLE,"  67. 
SEALING-WAX, 

marks  on,  593. 

SECRET  OF  TRADE.    See  TRADE  SECRET. 
"SEFTON"  CLOTH,  400. 
"  SEIXIO  "  WINE,  256. 

469 


INDEX. 

SELECTION, 

trade-mark  may  be  used  to  denote,  494. 
"SERIOUS  FAMILY  POLKA,  THE,"  105. 
SERVANT, 

rights  of,  on  leaving  employment.     See  FORMER  EMPLOYMENT. 

master  responsible  for  fraud  of,  321. 
SEWING-MACHINES, 

marks  on,  203,  284,  322,  413,  459,  477,  569,  635. 
SHEFFIELD  CUTLERS'  MARKS,  222,  &21,  643. 
SHERIFF'S  OFFICER, 

improper  use  of  name  of,  438. 
SHIRTINGS, 

marks  on,  411. 
SHIRTS, 

marks  on,  384,  394. 
SHOP, 

name  on,  107,  117,  149,  254,  268,  304,  323,  336,  381,  398. 
SHOWBOARD, 

use  of  name  on,  107. 

"  SHRIMPTON  &  HOOPER'S  "  NEEDLES,  123. 
SIGNATURE 

as  trade-mark,  130,  188,  560,  642,  654. 
SILK, 

marks  on,  217,  571. 

«  SILVER  GROVE  "  WHISKEY,  374. 
"  SIMMONS'  LIVER  MEDICINE,"  348. 
SINGER, 

breach  of  contract  by,  restrained,  112. 

sewing-machines,  413,  477,  659,  672. 
"  SINGLETON'S  GOLDEN  OINTMENT,"  389. 
SLANDER.     See  LIBEL. 
"  SLATE  ROOFING  PAINT,"  471. 
"SMYTH'S  BOND  STREET"  BRUSHES,  81. 
SNUFF, 

marks  on,  107,  620. 
SOAP, 

marks  on,  150,  225,  226,  280,  563,  565,  657. 
SOCIETY, 

name  of.     See  COMPANY. 
SODA  WATER, 

marks  on,  157. 
SOLICITING  CUSTOMERS 

restrained,  114,  141,  207,  385,  566. 

470 


INDEX. 

SOLICITOR'S 

name,  agreement  to  allow  use  of,  on  retirement,  71. 

practice,  sale  of,  66. 

practice,  what  is  the  good-will  of,  156. 

specific  performance  granted,  of  agreement  between,  on  dissolution  of 
partnership,  135. 

See  GOOD- WILL  ;  PARTNERSHIP. 
SONG, 

name  of,  132,  136. 

distinguishing  characteristics  of,  132. 

statement  as  to  authorship  of,  293. 
SOUP, 

marks  on,  461. 

"  SOUTHORN'S  BROSELEY  PIPES,"  243. 
SPIRITS, 

marks  on,  179,  187,  228,  240,  332,  366,  372,  373,  374,  395,  415,432, 

434,  437,  452,  483,  531,  544,  549,  556,  591,  650,  651,  652,  653. 
SPOONS, 

marks  on,  302. 

"  SPORTING  LIFE,  THE,"  292. 
"  SPRATT'S  DOG  BISCUITS,"  488,  644. 
SPURIOUSLY  MARKED  GOODS, 

price  of,  recovered  by  innocent  vendors,  101. 

not  protected  at  the  expense  of  the  genuine,  143,  209. 

action  for  damages  occasioned  by  order  for,  194. 

delivery-up  of,  for  erasure,  196,  211. 

to  indorsee  of  dock  warrants,  after  erasure,  229. 
refused  by  wharfingers,  239. 

question  as  to  lien  on,  for  costs,  369,  567. 
"  STANDARD,  THE,"  159. 
" STAR' 

iron,  271. 

shirts,  394. 

pencils,  481. 

oil,  486. 

soap,  563. 
STARCH, 

marks  on,  329. 
"STARK"  BAGS,  365. 
"  STATION  HOTEL,  THE,"  520. 
STEAMSHIPS, 

name  of  line  of  protected,  396. 
STEEL, 

marks  on,  63,  151,  152,  164,  171,  222.      See  IRON. 

471 


DTDEX. 

"  STEPHENS'  BLUE-BLACK  WRITING  FLUID,"  875. 

"STILLMAN  MILL,"  521. 

STOCKINGS, 

marks  on,  ML  » 

«  STONEBRAKER'S  MEDICINES,"  SSL 
STOVE  POLISH, 

marks  on.  331,  445. 
STOVES, 

marks  on,  313. 
STYLE  OF  PACKAGE 

will  be  protected,  667,  674. 
SUBMISSION, 

offer  of,  by  defendant  must  be  complete  for  him  to  escape  paving  costs, 

79,  136?  169,  170,  171,  234,  235,  321,  369,  533. 
"  SUCCESSOR 

to  E.  H.  Reeres  &  Co."  368. 

"  to  Phelan  &  Collender,"  479. 
«  SULPHATE  OF  QUININE,"  44 
"  SUPERFINE,  SUPERIOR," 

the  words,  cannot  be  appropriated,  226. 
"  SWAN  "  GIN,  544. 

"  SWEET  OPOPONAX  OF  MEXICO,"  276. 
"  STKES'  PATENT  "  SHOT  BELTS,  40. 
SYRUP, 

marks  on,  334. 

"  T.  H.  H."  IRON,  555. 

"  TAMAR  INDDZN,"  532. 

"TANNED  PATENTED"  LEATHER  CLOTH,  214,  223. 

•*  TASTELESS  "  DRUGS,  493. 

"TAYLER  &  CO.'S  PATENT  SOLID-HEADED  PINS,"  119. 

"TAYLOR'S  PERSIAN  THREAD,"  78,  83,84,  124. 

TEA, 

•arks  on.  60,  379,  484,  515,  603. 
«  TEMPLE  BAR,"  259. 
TERRITORIAL  BOUNDS, 

right  of  property  in  trade-mark  not  limited  by,  149. 
TEST  OF  INFRINGEMENT, 

imposition  on  the  public  la  the,  215,  223. 
TESTIMONIALS, 

improper  use  of  another's,  restrained,  87,  333. 
"THEATRE,  BOOTH'S,"  524. 
"THOMPSON'S  EYE  WATER,"  101. 
"  THOMSONIAN  MEDICINES,"  59. 

472 


INDEX. 

"  THORLEY'S  FOOD  FOR  CATTLE,"  560. 
THREAD, 

marks  on,  78,  79,  83,  84,  124,  142,  148,  190,  195,  257,  316,  519,  622. 
"THRESHER  &  GLENNY,  FROM,"  247. 
TILES, 

marks  on,  548. 
TIN  PLATES, 

marks  on,  61,  648. 
TITLE, 

plaintiff's,  must  be  clear  for  injunction  to  be  granted,  134,  145,  191, 

246,  284,  374,  391,  410,  487,  492,  494,  512. 
to  trade-mark  cannot  be  acquired   from  a  person  who  has  already 

sold  his  right,  367,  502. 
question  as  to,  between  successive  lessees  of  same  works,  61,  193. 

lessor  of  mines  of  fire-clay  and  lessees  of  fire-brick  works, 

193. 

landlord  and  tenant  of  hotel,  212,  233. 
exporter  and  manufacturer,  585. 

cannot  be  tried  by  Committee  of  Experts  at  Manchester,  632. 
of  musical  composition.     See  MUSICAL  COMPOSITION*. 
TOBACCO, 

marks  on,  299,  308,  369,  392,  399,  433,  466,  492,  494,  512,  542,  553, 

557,  572,  590,  595. 
"  TOD"  WATCHES,  647. 
TOILET, 

marks  on  preparations  for  the,  73,  113,  118,  130,  133,  144,  145,  163, 
191,  232,  275,  319,  335,  337,  350,  353,  378,  386,  418,  592,  642, 
654. 

"TONGE'S"  CLOTH,  321. 
"  TOUCHSTONE,"  550. 
TRADE-MARK, 

what  is  a,  215,  223,  300,  327,  541.  580. 

common,  descriptive  or  quality  marks  are  not.    See  COMMON  MARKS; 

DESCRIPTIVE  WORDS;  QUALITY,  MARKS  INDICATIVE  OF. 
fancy  names,  foreign  words,  initials,  numerals,  may  be.     See  FAXCY 

NAMES;  FOREIGN*  LANGUAGE;  INITIALS;  NUMERALS. 
special  form  of  barrel  is  no,  373. 

may  be  an  important  element  in,  395. 
hoops  on  barrels  are  no,  480, 
collar-box  is  no,  538. 
strip  of  leaf  tobacco  is  no,  572. 
in  an  alternative  shape,  394,  501,  544. 

name  of  inventor  appropriated  by  another  person  as  his,  284. 
may  consist  of  a  new  combination  of  letters,  277. 

473 


INDEX. 

TRADE-MARK  —  continued. 

may  consist  of  a  new  use  of  old  words,  282. 

varying  to  denote  quality,  339,  342,  367,  400,  636,  650,  651. 

official  mark  cannot  become,  523. 

difficult  to  claim  in  name  of  new  article,  536,  591. 

connection  between  trade  name  and,  172. 

good-will  and,  91,  168,  331,  350,  630. 

copyright  and,  105. 
distinguished  from  trade  name,  201. 

patent,  84.  % 

copyright,  84,  97,  130,  152,  246,  265,  325. 
into  local  and  personal,  215. 
compared  with  name  of  hotel,  108. 
held  to  be  either  deceptive  or  descriptive,  232,  422,  493,   571,  577, 

625. 

trade  name  may  become  a  mere  impersonal,  223,  279. 
may  be  used  to  denote  selection,  494. 
is  a  chattel  within  the  Bankruptcy  Act,  1869,  537. 
indicating  goods  dealt  with  by  three  firms,  585. 
use  of,  limited  to  a  particular  locality,  628. 
attached  to  certain  works,  61. 
moulded  into  bottles.     See  BOTTLES. 
questions  as  to  title  to.     See  TITLE. 
right  of  property  in,  denied,  73,  130. 

asserted,  106,   121,   145,   174,  213,  215,  223,  249,   253,  257, 

320,  329,  354,  413,  477,  541. 
is  personal  assets,  80,  215,  337. 
bequeathed  to  different  persons  by  will,  196. 
renewal  of  genuine  on  genuine  goods  is  legitimate,  130. 
cannot  be  severed  from  good-will,  331,  447,  487,  492,  630. 
may  be  partly  purchased  and  partly  invented,  367. 
name  may  become  mere  ordinary  transferable,  215,  223,  279. 
can  only  be  acquired  in  connection  with  a  particular  class  of  goods, 

215,  223,  234,  257,  555,  559,  616. 
acquired  by  long  user,  51,  459. 

without  long  user,  215,  234,  325,  364,  456,  627,  629. 
cannot  be  acquired  in  gross,  447,  487,  492,  630. 

except  by  the  previous  maker  of  the  goods,  492. 
of  partners  becomes  the  property  of  the  partnership,  222,  399,  408, 437, 

502,  561. 

of  partnership  cannot  be  appropriated  by  one  of  the  partners,  455. 
not  in  all  cases  assignable,  222,  223,  521. 

assignment  of,  without  direct  mention,  on  sale  of  good-will,  350,  354, 
492. 

474 


INDEX. 

TRADE-MARK  —  continued. 

cannot  be  twice  assigned  by  the  same  person,  367,  502. 
lost  by  becoming  common  to  a  trade,  263,  593,  610,  611,  637. 
sale  of  part  interest  in  refused,  231. 

principles  on  which  infringement  of  is  prohibited.     See  PRINCIPLES. 
not  required  to  be  completely  changed  where  used  bonafide,  310. 
See  ABANDONMENT;  ASSIGNMENT;  COLORABLE  IMITATION;  CUT- 
LER'S MARK;  INFRINGEMENT;  INJUNCTION;  NAME;  PARTNER- 
SHIP; REGISTRATION. 
TRADE-MARKS  REGISTRATION  ACT,  1875,  §  6, 

explained,  597. 
TRADE  NAME,  7,  172. 

connection  between  trade-mark  and,  172. 
distinguished  from  trade-mark,  201. 
may  become  a  mere  impersonal  trade-mark,  223. 
the  same,  used  by  two  firms,  283. 
not  in  all  cases  assignable,  223. 

may  not  be  appropriated  by  some  of  the  partners,  75,  122,  149,  166, 
248. 

a  purchaser  from  one  of  two  partners,  268. 

changed  by  surviving  partner  while  personal  representative  of 
deceased  partner  has  option  of  continuing  in  the  business, 
127. 

is  assets,  248. 

held  not  to  pass  on  sale  of  good-will,  185. 
held  to  pass  on  sale  of  good-will,  248,  639. 
sale  of  part  interest  in  refused,  231. 

principles  on  which  protection  is  given  in  cases  of,  325,  477,  639. 
actual  fraud  unnecessary  for  infringement  of,  if  deception  probable, 

477. 

breach  of  contract  in  respect  of  restrained,  485. 
Massachusetts  General  Statute  respecting,  201,  283. 

See  GOOD-WILL;  INJUNCTION;  NAME;  PARTNERSHIP. 
TRADE  SECRET 

is  personal  assets,  3. 

use  of  restrained,  31,  36,  110,  163,  290,  517,  604. 

not  restrained,  19,  24,  26,  517,  591,  628. 
trusts  of  enforced,  38. 

specific  performance  of  agreement  for  sale  of  enforced,  36. 
damages  given  for  breach  of  agreement  to  sell,  62. 
ascertainment  of  value  of,  38. 

sale  of,  by.  assignee  in  bankruptcy,  does  not  deprive  bankrupt  of  his 
right  to  use  it,  575. 

475 


INDEX. 

TRADE  SECRET  —  continued. 

trade-mark  not  to  be  used  by  persons  unacquainted  with,  447. 

except  as  against  persons  who  have  no  better  right  in  the  mark, 

455. 
TRANSFER 

of  marks  indicative  of  one  quality  to  goods  of  another,  126,  253,  441, 

549,  556,  650,  651. 
TRANSFERABLE  TRADE-MARK, 

name  may  become  mere  ordinary,  215,  223,  279. 
TRANSMISSION 

of  trade-marks  on  bankruptcy,  222,  323,  447. 

of  good-will  on  bankruptcy,  69. 

of  trade-marks  of  partnership,  399,  408,  437. 
"  TRIAL 

and  Triumph,"  638. 

of  action  for  infringement,  mode  of,  644. 
"  TRIANGLE  BEER,"  655. 
TRUST, 

breach  of,  in  respect  of  trade  secret,  restrained,  31,  110. 

etchings,  restrained,  98. 
TRUSTS 

of  trade  secret  enforced,  38. 

of  good-will  enforced,  74. 
"TUCKER  SPRING  BED,  THE,"  474. 
"  TURIN  "  CLOTH,  400. 
TURKISH  LETTERS, 

word  in,  used  as  trade-mark,  51. 
"TWO  ELEPHANT"  YARN,  646. 
TYPE, 

deception  aided  by  use  of  special,  317. 

And  see  LETTERS. 

UNFAIR  REPORT 

of  proceedings  in  a  trade-mark  case,  injunction  not  granted  to  restrain 

publication  of,  190. 
"  UNITED 

Service  "  soap,  280. 

States  Act  of  1870,  held  to  be  invalid,  629,  658. 

registration  under,  held  not  to  be  compulsory,  352. 
Circuit  Court,  jurisdiction  of,  in  cases  of  registered  trade-marks, 

613,  629. 
UNPATENTED  ARTICLE, 

no  exclusive  right  in,  3,  4,  19,  59,  68,  84,  99,  103,  130,  388,  389,  416, 
461,  591,  628. 

476 


INDEX. 

UNWARY  PURCHASER.     See  ORDINARY  PURCHASER. 
USER, 

acquisition  of  trade-mark  by  long,  51,  459. 

without  long,  215,  234,  325,  364. 
question  as  to  insufficiency  of,  88,  92,  246. 
registration  granted,  with  limitation  as  to  mode  of,  641,  654. 

locality  of,  643. 

"VALLEY"  WHISKEY,  395. 
VALUE 

of  deceased,  or  retiring  partner's  interest  in  good-will  of  partnership, 
how  ascertained,  70,  156,  158,  176, 177,  206,  208,  215,  238,  248,  260, 
451. 

of  good-will  of  public  house,  how  ascertained,  462. 
"VALVOLINE"  OIL,  597. 
"VANITY  FAIR"  CIGARETTES,  553,  595. 
VEHICLES, 

imitation  of  line  of,  restrained,  57. 

use  of  name  of  hotel  on,  104,  111,  266. 
"  VELNO'S  VEGETABLE  SYRUP,"  19. 
VENDIBLE 

article  in  the  market,  plaintiff's  mark  must  have  been  placed  on  a,  to 

support  an  action,  140,  215,  223,  234,  264,  301,  339. 
VENDOR 

of  trade-mark  cannot  resell,  367,  502. 

price  of  spuriously  marked  goods  recovered  by  innocent,  101. 
VICTORIA 

cases,  517,  649,  650,  651,  652,  653. 

lozenges,  227. 
"VOLDNER'S  SCHIEDAM  SCHNAPPS,"  179. 

"WAMSUTTA"  MUSLIN,  660. 
WARRANTY 

not  implied  by  use  of  name  of  early  painter,  8. 

may  be  implied  by  use  of  name  of  modern  painter,  56. 
WASHING  POWDER, 

marks  on,  296. 
WATCHES, 

marks  on,  51,  196,  211,  647. 
WATER 

pipes,  marks  on,  612. 

marks  on  mineral,  354,  465,  509,  529,  558. 
"WATERTOWN  WEEKLY  RE-UNION,  THE,"  576. 
"WAYNE"  GLASS,  121. 

477 


INDEX. 

"  WEDGWOOD  "  POTTERY,  96. 
"WESTLEY  RICHARDS"  GUNS,  441. 
"WESTON'S  WIZARD  OIL,"  517. 
WHARFINGERS' 

lien,  369,  567. 

"WHAT  CHEER  HOUSE,  THE,"  212. 
"WHEELER  &  WILSON'S"  SEWING-MACHINES,  322. 
WHISKEY, 

marks  on.     See  SPIRITS. 
WHITE  LEAD, 

marks  on,  402,  511. 

«  WILDER  &  CO.'S  STOMACH  BITTERS,"  372. 
WILL, 

trade-mark  bequeathed  to  different  persons  by,  196. 
WINE, 

marks  on,  229,  235,  239,  256,  506,  533,  537,  567. 
WIRE, 

marks  on,  213. 

"WISTAR'S  BALSAM  OF  WILD  CHERRY,"  90. 
"WM.  ASH  &  CO.'S"  STEEL,  222. 

"WOLFE'S  SCHIEDAM  SCHNAPPS,"  179,  390,  415,  434,  653. 
"WONDERFUL  MAGAZINE,  THE,"  10,  15,  17. 
"  WOOD'S  HOTEL,"  467. 
WOOLLEN  YARNS, 

marks  on,  601. 

"WORCESTERSHIRE  SAUCE,"  407,  436,  513. 
"WOTHERSPOON'S  VICTORIA  LOZENGES,"  227 

"X  BROOMS,  ENGLISH'S,"  342. 

"YANKEE  SOAP,"  150,225. 
YEAST  POWDER, 

marks  on,  664. 
"YORKSHIRE  RELISH,"  526. 

"ZINGARI"  BOUQUET,  350. 

478 


ALBERT  M,  MOORE, 

ATTORN7  ;  AT  LAW, 

—• «  AXl)  s». 

SOLICITOR  i  vrgf 

So  &S0  Central  Block 
LOWELL,    -      - 


000  688  453 


